Underwood v. Bank of America Corporation

• Citation: 996 F.3d 1038
• Decision Date: 30 April 2021
• Docket Number: No. 19-1349, No. 20-1087,19-1349
• Parties: Erik M. UNDERWOOD, a Colorado resident, and My24HourNews.Com, Inc., a Colorado corporation, Plaintiffs - Appellants, v. BANK OF AMERICA CORPORATION, a Delaware corporation, Defendant - Appellee.
• Court: U.S. Court of Appeals — Tenth Circuit

996 F.3d 1038

Erik M. UNDERWOOD, a Colorado resident, and My24HourNews.Com, Inc., a Colorado corporation, Plaintiffs - Appellants,

v.BANK OF AMERICA CORPORATION, a Delaware corporation, Defendant - Appellee.

No. 19-1349

No. 20-1087

United States Court of Appeals, Tenth Circuit.

FILED April 30, 2021

Marc A. Goldman, Massey & Gail, Washington, D.C., (Harold R. Bruno III, and Nicholas F. Labor, Robinson Waters & O'Dorisio, P.C., Denver, Colorado, with him on the briefs) for Plaintiffs – Appellants.

David H. Bernstein, (Jeremy Feigelson, Jared I. Kagan, and Alexandra P. Swain, with him on the brief), Debevoise & Plimpton LLP, New York, New York, for Defendant – Appellee.

Before MATHESON, EBEL, and MORITZ, Circuit Judges.

MATHESON, Circuit Judge.

Erik Underwood and My24HourNews.Com, Inc., ("Mr. Underwood" or the "Plaintiffs"), own two putative service marks: "E.R.I.C.A." and "my24erica.com." Mr. Underwood claims to have used these marks in his business, which offers internet-based search engine and personal assistant services. Bank of America Corporation ("BofA") owns a registered federal trademark for a mobile banking application known as "ERICA."

Mr. Underwood sued BofA for infringing his marks. BofA counterclaimed to cancel Mr. Underwood's Georgia registration of his E.R.I.C.A. mark. The district court granted BofA's motions for summary judgment on its cancellation counterclaim and on Mr. Underwood's infringement claims. Exercising jurisdiction under 28 U.S.C. § 1291, we affirm in part and vacate and remand in part.

I. BACKGROUND

A. Legal Background

"The principle underlying trademark protection is that distinctive marks—words, names, symbols, and the like—can help distinguish a particular artisan's goods from those of others." B&B Hardware, Inc. v. Hargis Indus., Inc. , 575 U.S. 138, 142, 135 S.Ct. 1293, 191 L.Ed.2d 222 (2015).¹ "The basic rule of trademark ownership in the United States is priority of use," which occurs through "use of a symbol to identify the goods or services of one seller and distinguish them from those offered by others." 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 16:1 (5th ed. Mar. 2021 update) [hereinafter McCarthy].

"The foundation of current federal trademark law is the Lanham Act." Matal v. Tam , ––– U.S. ––––, 137 S. Ct. 1744, 1752, 198 L.Ed.2d 366 (2017). "[T]he purpose of the Lanham Act was to codify and unify the common law of unfair competition and trademark protection." Inwood Lab'ys, Inc. v. Ives Lab'ys, Inc. , 456 U.S. 844, 861 n.2, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982) (White, J., concurring). "Under the Lanham Act, trademarks that are used in commerce ... may be federally registered." Tam , 137 S. Ct. at 1752 (quotation omitted). Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), "protects an unregistered mark." See Centaur Commc'ns, Ltd. v. A/S/M Commc'ns, Inc. , 830 F.2d 1217, 1220 (2d Cir. 1987), overruled on other grounds by Paddington Corp. v. Attiki Imps. & Distribs., Inc. , 996 F.2d 577, 585 (2d Cir. 1993). Federally unregistered marks also "can be enforced under state common law, or if it has been registered in a State, under that State's registration system." Tam , 137 S. Ct. at 1753. Federal and state trademark protections generally parallel each other, and the former do not preempt the latter. See id.

B. Factual Background

1. Initial Development of E.R.I.C.A.

In 2009, Mr. Underwood developed a business plan including a virtual assistant called E.R.I.C.A.—named for Mr. Underwood's sister and a backronym for Electronic Repetitious Informational Clone Application. Mr. Underwood envisioned E.R.I.C.A. as an animated application "that you ask and you get information in return," and that would "mimic[ ] human interaction." App., Vol. 4 at 489.² Mr. Underwood explained that in 2009 E.R.I.C.A. was not "launched, but there was a demo associated with her" that appeared on his website, My24HourNews.Com. Id. at 489-90.

Mr. Underwood took steps in 2009 to attract investor interest in his business. He used a PowerPoint presentation at business pitch meetings containing the following picture of E.R.I.C.A. to show "the concept of how E.R.I.C.A. would look" and "what she might say while interacting with the viewer as a finished end-product":

?

App. (No. 19-1349), Vol. 2 at 314, 319, 321. Mr. Underwood gave a presentation at the Small Business Administration office in Atlanta. Between 2009 and 2011, he distributed nearly 1,500 business cards featuring a picture of E.R.I.C.A. Beginning in February 2010, he distributed roughly 200 DVDs containing the E.R.I.C.A. demo.

2. Georgia Registration

In October 2010, Mr. Underwood applied to register a service mark in Georgia for "a multi national computer animated woman ... [named] Erica." App. (No. 19-1349), Vol. 1 at 142. On the application, Mr. Underwood explained the service associated with the mark: "E.R.I.C.A. verbally tells the news and current events through cell phone and computer applications." Id. The mark was approved for registration in Georgia.

3. Proposed Joint Venture

In 2012, Mr. Underwood gave a presentation to AT&T. AT&T and My24HourNews.Com, Inc. discussed forming a joint venture, but it never came to fruition.³

4. my24erica.com

In 2012, Mr. Underwood registered the domain name my24erica.com with GoDaddy.com.⁴ my24erica.com functioned "as a search engine ... where [E.R.I.C.A.] can recall queries of movies [and] television shows." App., Vol. 3 at 517. A user could enter a title into the search bar on my24erica.com, and E.R.I.C.A. could "offer her picks of her favorite kind of movies through an algorithm code." Id. The same picture of the computer-generated human face that appeared on the PowerPoint presentation appeared in the top left corner of my24erica.com. my24erica.com also had a hyperlink to a Facebook page for My24HourNews.Com, which received 772 "likes" by September 2018.

According to Mr. Underwood, my24erica.com became publicly accessible in March 2015. See App., Vol. 5 at 1061. BofA claims that my24erica.com was not publicly accessible until June 2018. See Aplee. Br. at 40.

In support of his assertion, Mr. Underwood points to, among other things, declarations of individuals who claim to have visited my24erica.com in the relevant time frame. The parties also introduced dueling expert reports. BofA submitted the report of Keena Willis, the Director of Global Subpoena Compliance at GoDaddy.com, LLC, the hosting platform on which my24erica.com was allegedly hosted. She reviewed voluminous business records from GoDaddy.com and concluded the "records indicate that, on or about June 27, 2018, Mr. Underwood began hosting my24erica.com with GoDaddy." App., Vol. 2 at 302. Mr. Underwood, on the other hand, relied on the expert report of Jonathan Hochman, who investigated records associated with my24erica.com and my24erica.com's web hosting control panel, database administration tool, and administrator portal. He concluded the website was launched on March 18, 2015.

5. BofA's Registered Mark

In October 2016, BofA filed an "intent to use" application with the United States Patent and Trademark Office ("USPTO") for ERICA, a mark associated with "voice controlled information and personal assistant devices in the field of banking and personal finance." App., Vol. 1 at 36. The USPTO registered the mark in July 2018. The mark had a priority date based on the October 2016 filing date. See 15 U.S.C. § 1057(c).

C. Procedural Background

1. Complaint

Alleging that BofA's mark infringed his E.R.I.C.A. and my24erica.com marks, Mr. Underwood sued BofA for (1) false association under Section 43(a) of the Lanham Act, (2) common law service mark infringement, (3) common law unfair competition, (4) violations of the Colorado Consumer Protection Act, and (5) service mark infringement under Georgia law.

2. Counterclaims

BofA answered the complaint and brought six counterclaims: one for cancellation of the Georgia registration for the E.R.I.C.A. mark, and five for declarations under the federal Declaratory Judgment Act that BofA had not violated (1) Section 43(a) of the Lanham Act, (2) common law service mark protections, (3) common law unfair competition protections, (4) the Colorado Consumer Protection Act, and (5) Georgia service mark protections.

3. Motion for Partial Summary Judgment

BofA moved for partial summary judgment on its cancellation counterclaim. The district court granted the motion and ordered the Georgia Secretary of State to cancel the registration. The court found that the "plaintiffs did not have valid grounds to register the trademark at the time of filing," as required under Georgia law. App. (No. 19-1349), Vol. 2 at 396. Mr. Underwood filed an interlocutory appeal from the district court's grant of partial summary judgment.

4. Motion for Summary Judgment

BofA moved for summary judgment on Mr. Underwood's infringement claims. The district court granted the motion. It found that Mr. Underwood had failed to demonstrate a protectable interest in his marks. On that basis, the district court dismissed Mr. Underwood's claims for (1) violation of Section 43(a) of the Lanham Act, (2) common law service mark infringement, and (3) common law unfair competition.⁵

The district court entered final judgment, and Mr. Underwood timely appealed. We consolidated the two appeals and now resolve both.

II. DISCUSSION

We address (A) our appellate jurisdiction, (B) BofA's cancellation counterclaim, and (C) Mr. Underwood's infringement claims.

We review the district court's grant of summary judgment de novo, applying the same standard applied by the district court. See Sandoval v. Unum Life Ins. Co. of Am. , 952 F.3d 1233, 1236 (10th Cir. 2020). We view the evidence and draw all reasonable inferences in the light most favorable to Mr. Underwood. See Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment is proper "if the movant shows that there is no genuine dispute as to any material fact...