High Point Design, LLC v. LM Insurance Corp., No. 16-1446 (2d Cir. 2018)

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Justia Opinion Summary

After Liberty refused to provide High Point a defense pursuant to the terms of insurance policies providing coverage for advertising injuries, the district court granted High Point's motion for partial summary judgment. The underlying litigation stemmed from Buyer's Direct's claim that High Point's Fuzzy Babba slipper infringed on the Snoozie's design patent.

The Second Circuit agreed with the district court that as used in the counterclaims and with the additional context of the discovery demands in the underlying litigation, the term "offering for sale" includes advertising, such that Liberty owes High Point a defense. However, the court held that Liberty's duty to provide a defense did not arise until High Point provided Liberty with discovery demands served in the underlying litigation. Therefore, the district court vacated the award of damages and remanded for the district court to determine the amount of legal fees incurred from that point forward.

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16-1446-cv High Point Design, LLC v. LM Insurance Corp. 16 1446 cv High Point Design, LLC v. LM Insurance Corp. UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT ____________________ 1 2 3 4 August Term, 2016 5 6 7 (Argued: May 8, 2017 Decided: December 19, 2018) 8 Docket No. 16 1446 cv 9 10 ____________________ 11 12 13 HIGH POINT DESIGN, LLC, 14 Plaintiff Appellee, 15 16 v. 17 18 19 20 LM INSURANCE CORPORATION, LIBERTY MUTUAL FIRE INSURANCE COMPANY, LIBERTY INSURANCE CORPORATION, 21 Defendants Appellants.1 22 23 ____________________ 24 25 26 Before: NEWMAN, POOLER, and HALL, Circuit Judges. 27 High Point Design, LLC sought a defense from its insurer pursuant to the 28 29 terms of insurance policies providing coverage for advertising injuries. The 1 The Clerk of the Court is directed to amend the caption as above. 1 insurers, LM Insurance Corporation, Liberty Mutual Fire Insurance Company 2 and Liberty Insurance Corporation (collectively, “Liberty”), refused to provide a 3 defense on the ground that the counterclaim at issue in the underlying litigation 4 alleged only injury for trade dress infringement, not advertising injury. The 5 United States District Court for the Southern District of New York (Katherine B. 6 Forrest, J.) granted High Point’s motion for partial summary judgment and 7 found Liberty owed High Point a defense based on allegations in the 8 counterclaim that High Point “offered” the infringing items for sale. We agree 9 with the district court that as used in the counterclaims and with the additional 10 context of the discovery demands in the underlying litigation, the term “offering 11 for sale” includes advertising, such that Liberty owes High Point a defense. 12 However, Liberty’s duty to provide a defense did not arise until High Point 13 provided Liberty with discovery demands served in the underlying litigation. 14 We therefore vacate the district court’s award of damages, and remand so that 15 the district court can determine the amount of legal fees incurred from that point 16 forward. 2 1 Affirmed in part, vacated and remanded in part. 2 Judge Newman concurs in part and in the result, and files a separate concurring 3 opinion. 4 ____________________ MARSHALL T. POTASHNER, Jaffe & Asher LLP (Bension D. DeFunis, on the brief), New York, N.Y., for Defendants Appellants LM Insurance Corporation, Liberty Mutual Fire Insurance Company, Liberty Insurance Corporation. RICHARD S. SCHURIN, Stern & Schurin LLP (Steven Stern, on the brief), Garden City, N.Y., for Plaintiff Appellee High Point Design, LLC. 5 6 7 8 9 10 11 12 13 15 POOLER, Circuit Judge: 16 17 terms of insurance policies providing coverage for advertising injuries. The 18 insurers, LM Insurance Corporation, Liberty Mutual Fire Insurance Company 19 and Liberty Insurance Corporation (collectively, “Liberty”), refused to provide a 20 defense on the ground that the counterclaim at issue in the underlying litigation 21 alleged only injury for trade dress infringement, not advertising injury. The 22 United States District Court for the Southern District of New York (Katherine B. 14 High Point Design, LLC sought a defense from its insurer pursuant to the 3 1 Forrest, J.) granted High Point’s motion for partial summary judgment and 2 found Liberty owed High Point a defense based on allegations in the 3 counterclaim that High Point “offered” the infringing items for sale. We agree 4 with the district court that as used in the counterclaims and with the additional 5 context of the discovery demands in the underlying litigation, the term “offering 6 for sale” includes advertising, such that Liberty owes High Point a defense. 7 However, Liberty’s duty to provide a defense did not arise until High Point 8 provided Liberty with discovery demands served in the underlying litigation. 9 We therefore vacate the district court’s award of damages, and remand so that 10 the district court can determine the amount of legal fees incurred from that point 11 forward. BACKGROUND 12 13 As relevant here, High Point sells and distributes footwear on a wholesale 14 basis. From November 2008 through November 2012, High Point was the named 15 insured on a series of commercial general liability insurance and umbrella 16 policies issued by Liberty (the “Policies”). At issue here is coverage under a 4 1 commercial lines policy, No. YV5 Z21 093433 020 (the “CGL”), and an umbrella 2 policy, No. TH2 Z21 093433 030. The CGL provides in relevant part that: 3 We will pay those sums that the insured becomes legally obligated to pay as damages because of “personal and advertising injury” to which this insurance applies. We will have the right and duty to defend the insured against any “suit” seeking those damages even if the allegations of the “suit” are groundless, false or fraudulent. However, we will have no duty to defend the insured against any “suit” seeking damages for “personal and advertising injury” to which this insurance does not apply. We may, at our discretion, investigate any offense and settle any claim or “suit” that may result. . . . App’x at 559. 4 5 6 7 8 9 10 11 12 13 14 15 16 17 The CGL defines “personal and advertising injury” to include an 18 “injury . . . arising out of . . . [i]nfringing upon another’s copyright, trade dress or 19 slogan in [High Point’s] ‘advertisement.’” App’x at 535. “Advertisement” is 20 defined as “a paid announcement that is broadcast or published in the print, 21 broadcast or electronic media to the general public or specific market segments 22 about your goods, products or services for the purpose of attracting customers or 23 supporters.” App’x at 534. The CGL excludes coverage for: 5 12 “Personal and advertising injury” arising out of the infringement of copyright, patent, trademark, trade secret or other intellectual property rights or out of securities fraud. Under this exclusion, such other intellectual property rights do not include the use of another’s advertising idea in your “advertisement.” However, this exclusion does not apply to infringement, in your “advertisement”, of copyright, trade dress or slogan. App’x at 483, 534. 13 14 “injury arising out of paid announcements in the print or broadcast media 15 resulting in . . . [i]nfringement of copyright, title or slogan.” App’x at 601. The 16 umbrella policy excludes “advertising injury arising out of . . . [p]atent 17 infringement.” App’x at 638. 18 19 Babba slipper, which it sold through various retailers, including Meijer, Inc., 20 Sears Holding Corp., and Wal Mart Stores, Inc. (together, the “Retailers”). High 21 Point Design LLC v. Buyer’s Direct, Inc., 621 F. App’x 632, 635 (Fed. Cir. July 30, 22 2015). Buyer’s Direct Inc. also manufactures slippers, including the Snoozie, on 23 which it holds a design patent. Id. at 634 35. Buyer’s Direct sent High Point a 1 2 3 4 5 6 7 8 9 10 11 The umbrella policy also covers an “advertising injury,” defined as an One of the items High Point manufactures and distributes is the Fuzzy 6 1 cease and desist letter alleging that the Fuzzy Babba slipper infringed on the 2 Snoozie’s design patent. Id. at 635. High Point responded by seeking a 3 declaratory judgment that the Fuzzy Babba’s design does not infringe on Buyer’s 4 Direct’s design patent, and that the patent covering the Snoozie is either invalid 5 or unenforceable. Id. Buyer’s Direct filed a counterclaim for patent and trade 6 dress infringement. Id. It also filed a third party complaint against the Retailers 7 alleging that the Retailers infringed the Snoozie’s patent and trade dress by 8 selling Fuzzy Babba slippers. Id. 9 As is relevant to High Point’s claims for insurance coverage, Buyer’s 10 Direct’s counterclaim alleges that: 11 17 Counterclaim Defendant High Point has infringed and is still infringing the ‘183 Patent by manufacturing, importing, selling and/or offering for sale the High Point Slipper Socks, and/or other footwear that embodies the subject matter claimed in the ‘183 Patent. App’x at 294 (emphasis added). Buyer’s Direct’s discovery demands sought 18 advertising and marketing materials. Document Request No. 22 sought ”[a]ll 19 advertising, marketing, promotional and/or descriptive documents . . . referring 20 and/or relating to High Point’s Accused Products.” App’x at 330. Interrogatory 12 13 14 15 16 7 1 No. 5 sought the identity of the person “at High Point most knowledgeable about 2 and/or most responsible for . . . the advertising, marketing and/or promotion of 3 High Point’s Accused Products . . .” App’x at 315 316. Buyer’s Direct also noticed 4 the deposition of the person at High Point with knowledge of “[a]ll 5 advertisements, marketing statements, sales or marketing presentations, and 6 correspondence with customers or potential customers of High Point relating to 7 High Point’s sale or attempted sale of the Accused Products.” App’x at 342. 8 Buyer’s Direct’s discovery demands were provided to Liberty. After High Point was served with Buyer’s Direct’s counterclaims, it 9 10 notified Liberty of the claim and sought a defense and indemnification. On 11 March 23, 2012, Liberty sent High Point a letter stating that after investigation, it 12 disclaimed coverage. High Point then commenced this litigation, seeking 13 coverage under the insurance policies for the costs of defending against Buyer’s 14 Direct’s counterclaim. 15 16 for partial summary judgment. The district court granted the motion on March 2, 17 2015, finding Liberty owed High Point a duty to defend under both the The parties engaged in discovery, and in January 2015 High Point moved 8 1 commercial line and umbrella policies. In a decision handed down from the 2 bench, the district court found that the counterclaims’ reference to an “offering 3 for sale” asserted a claim for an advertising injury within the meaning of the 4 policies. App’x at 1045. The district court reasoned that the “phrase ‘offering for 5 sale’ . . . is equivalent to something that could be broadly construed as 6 promoting or advertising.” Id. By stipulation dated April 25, 2016, Liberty and 7 High Point agreed that High Point’s damages totaled $1.35 million. The district 8 court entered a final judgment awarding High Point $1,657,450.44, which 9 included an earlier payment made by Liberty to High Point. This appeal 10 followed. DISCUSSION 11 12 “We review the district court s grant of partial summary judgment de 13 novo.” Juliano v. Health Maint. Org. of New Jersey, Inc., 221 F.3d 279, 286 (2d Cir. 14 2000). “Because interpretation of an insurance agreement is a question of law, 15 we review the district court s construction of the [policies] de novo.” VAM Check 16 Cashing Corp. v. Fed. Ins. Co., 699 F.3d 727, 729 (2d Cir. 2012). 9 1 2 obligates Liberty to pay those sums that its insured, High Point, becomes legally 3 obligated to pay for “’personal and advertising injury’ to which this insurance 4 applies.” App’x at 559. Paragraph V(2)(b)(7) of the CGL defines “personal and 5 advertising injury” to include injury arising out of the “offense” of “infringing 6 upon another’s copyright, trade dress or slogan in your ‘advertisement.’” App’x at 7 535 (emphasis added).2 However, the exclusion provision of the CGL excludes “advertising injury 8 9 We begin with the language of the policy. Paragraph (1)(a) of the CGL arising out of the infringement of copyright, patent, trademark, trade secret or 10 other intellectual property rights.” App’x at 483 (emphasis added). By excluding 11 advertising injury out of trademark rights, the policy implicitly excludes injury 12 arising out of trade dress infringement, because trade dress is one form of 13 product identification included within the definition of a trademark. It appears Liberty changed its form liability policy to explicitly include “trade 2 dress” infringement occurring “in” an advertisement. The current phrase “copyright, trade dress or slogan” replaced the phrase “copyright, title or slogan” in Liberty’s previous liability policy, which was before this Court in R.C. Bigelow, Inc. v. Liberty Mut. Ins. Co., 287 F.3d 242, 245 & App’x 35 ¶ V(a)(d)(2d Cir. 2002). In Liberty’s umbrella policy, also at issue here, “advertising injury” is still defined as “[i]nfringment of copyright, title or slogan.” App’x at 601. 10 1 See Wal Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 206 (2000)(citations 2 omitted). Then, in the convoluted structure apparently favored by insurance 3 companies, the exclusion has its own exclusion: “However, this exclusion does 4 not apply to infringement, in your ‘advertisement’, of copyright, trade dress or 5 slogan.” Id. This secondary exclusion from the primary exclusion was apparently 6 inserted to make clear that the primary exclusion does not exclude coverage for 7 trade dress infringement in an advertisement, which Paragraph V(2)(b)(7) 8 affirmatively sets forth.3 9 As a result, Liberty does not cover claims that a product or the packaging 10 of a product sold by High Point infringes on the trade dress of another 11 company’s product but does cover claims that a High Point advertisement 12 containing a photo or drawing of High Point’s product infringes the trade dress 13 of another company’s product. It strikes us as odd that there is no coverage for 14 liability arising from trade dress infringement caused by an insured’s product or The exclusion provision in Liberty’s policy considered in the Bigelow litigation excluded “ ‘advertising injury’ arising out of . . . (4) patent infringement or securities fraud.” Bigelow, 287 F.3d at 245 & App’x at 35. Since that provision did not exclude any form of trademark infringement, it had no need to exclude from the exclusion trade dress infringement in an advertisement. 11 3 1 its packaging, but there is liability arising from trade dress infringement caused 2 by a photo or drawing of the same product in an advertisement. Nevertheless, 3 that is the distinction the policy makes, and we are obliged to accept it. So the 4 issue becomes whether, in the underlying suit, High Point faced a claim of 5 advertising injury arising from trade dress infringement in one or more of its 6 advertisements. 7 Four basic principles of New York insurance law guide our analysis. First, 8 the duty of an insurer to defend its insured is “exceedingly broad” and far more 9 expansive than the duty to indemnify its insured. Continental Cas. Co. v. Rapid 10 American Corp., 80 N.Y.2d 640, 648 (1993) (citation omitted). Second, the insurer’s 11 duty to provide a defense is invoked “whenever the allegations in a complaint 12 against the insured fall within the scope of the risks undertaken by the insurer, 13 regardless of how false or groundless those allegations might be.” Seaboard Sur. 14 Co. v. Gillette Co., 64 N.Y.2d 304, 310 (1984). Third, “[i]f any of the claims against 15 the insured arguably arise from covered events, the insurer is required to defend 16 the entire action.” Frontier Insulation Contractors, Inc. v. Merchants Mut. Ins. Co., 91 17 N.Y.2d 169, 175 (1997). Finally, insurers are to look beyond the four corners of the 12 1 complaint in deciding whether there is coverage. Fitzpatrick v. American Honda 2 Motor Co., 78 N.Y.2d 61, 65 (1991). “[A]n insured s right to a defense should not 3 depend solely on the allegations a third party chooses to put in the complaint.” 4 Id. at 68. Thus, the insurer may deny its insured a defense “only if it could be 5 6 concluded as a matter of law that there is no possible factual or legal basis on 7 which the insurer might eventually be held to be obligated to indemnify the 8 insured under any provision of the insurance policy.” Servidone Constr. Corp. v. 9 Sec. Ins. Co. of Hartford, 64 N.Y.2d 419, 424 (1985) (internal quotations marks and 10 brackets omitted). “If the allegations of the complaint are even potentially within 11 the language of the insurance policy, there is a duty to defend.” Town of Massena 12 v. Healthcare Underwriters Mut. Ins. Co., 98 N.Y.2d 435, 443 (2002). 13 14 constitutes an “advertising injury.” “[T]here is much confusion in the caselaw 15 concerning when an ‘advertising injury’ is ‘caused’ by advertising within the 16 meaning of standard business insurance policies.” R.C. Bigelow, 287 F.3d at 247 17 (citation omitted). “[C]ourts are to compare the allegations of the complaint to Whether Liberty owes High Point a defense turns on the meaning of what 13 1 the terms of the policy.” Century 21, Inc. v. Diamond State Ins. Co., 442 F.3d 79, 83 2 (2d Cir. 2006) (internal quotation marks omitted). “If, liberally construed, the 3 claim is within the embrace of the policy, the insurer must come forward to 4 defend its insured no matter how groundless, false or baseless the suit may be.” 5 Colon v. Aetna Life & Cas. Inc. Co., 66 N.Y.2d 6, 8 9 (1985) (citation omitted). 6 7 Hight Point a duty to defend. We disagree, and find that the “offer[] for sale” 8 alleged in the counterclaim, coupled with the discovery demands seeking 9 advertising materials, triggered Liberty’s duty to defend. Here, Liberty argues that the district court erred in finding Liberty owed 10 Viewed broadly as required under New York law, an “offer for sale” 11 extends to advertising. We determined in Century 21 that “marketing,” as used in 12 a similar insurance agreement, extends to advertising. 442 F.3d at 83. 13 “Marketing” includes activities that are not advertising, but “the term also must 14 be understood to refer to activities that accord with the common use of 15 ‘advertising.’” Id. Similarly, while the term “offer for sale” includes activities that 16 are not advertising, it also includes advertising activity. Indeed, the purpose of 17 most advertising is to “offer for sale” various goods and services. The CGL at 14 1 issue here recognizes this, defining “Advertisement” to mean “a paid 2 announcement that is broadcast or published in the print, broadcast or electronic 3 media to the general public or specific market segments about your goods, 4 products or services for the purpose of attracting customers or supporters.” 5 App’x at 534. The umbrella policy covers an “injury arising out of paid 6 announcements in the print or broadcast media resulting in . . . [i]nfringement of 7 copyright, title or slogan.” App’x at 601. 8 9 do not implicate advertising activity. For example, simply placing an item on the 10 counter with a sign indicating its price is an “offer for sale” even though it is not 11 advertising. Liberty argues that High Point’s advertising could not have caused 12 any advertising injury within the meaning of the policies because the advertising 13 simply displayed the allegedly infringing product. But Buyer’s Direct’s claim 14 that it was injured by High Point’s “offering for sale” the infringing slippers 15 suffices to demonstrate that an advertising injury may have resulted from the use 16 of the infringing trade dress in advertisements. The slippers were not sold The phrase “offering for sale” may have multiple meanings, some of which 15 1 encased in packaging of any kind—they were simply displayed as slippers.4 2 Displaying the infringing trade dress in an advertisement is an advertising injury 3 for which damages can be awarded where, as here, it is a means by which the 4 alleged infringer creates customer confusion and trades on the offended party’s 5 goodwill and protected designs. See R.C. Bigelow, 287 F.3d at 248. 6 7 under Connecticut law, which like New York law takes a liberal position with 8 regards to an insurer’s duty to defend. See id. at 245 46 (noting that under 9 Connecticut law, “[t]he duty to defend does not hinge on the skill or manner in Bigelow is particularly instructive on this point. The complaint there arose 10 which a complaint is drafted, but rests on the substantive thrust of the complaint, 11 and the surrounding facts”). The insured s alleged infringement primarily 12 constituted tea packaging with trade dress “confusingly similar” to another 13 company s packaging. Id. at 244. Our Court held that the complaint pled an 14 advertising injury within the meaning of the policy where it stated that the 15 insured copied the plaintiff’s trade dress and displayed it in published 16 advertisements. In seeking a defense from its insurer, “Bigelow contend[ed] that 4 For examples, see attached Appendix. 16 1 Celestial’s claims of trade dress infringement [fell] within the scope of the 2 advertising injury provision because the allegedly infringing trade dress was 3 depicted in Bigelow s published advertisements.” Id. at 246. Here, the slippers 4 were displayed in advertisements as they were sold: without packaging, such 5 that the trade dress was used to offer the products for sale in the print 6 advertisements, just as the allegedly infringing packaging was displayed in the 7 ads at issue in Bigelow. 8 9 of its duty to defend, the discovery demands seeking information related to the 10 paid advertisements place High Point’s advertising squarely at issue. New York 11 does not rest an insurer’s duty to defend solely on the language of the complaint. 12 See Fitzpatrick, 78 N.Y.2d at 68. The fact that the counterclaim does not set forth a 13 claim labeled “advertising injury” is not a barrier to an insured seeking coverage 14 for a defense under New York law. See id. at 70 (rejecting “four corners of 15 complaint” rule and holding that an insurer must provide a defense “where, 16 notwithstanding the complaint allegations, underlying facts made known to the 17 insurer create a reasonable possibility that the insured may be held liable for Even if the counterclaims, standing alone, did not place Liberty on notice 17 1 some act or omission covered by the policy” (internal quotation marks omitted)). 2 Buyer’s Direct’s discovery demands sought information related to 3 advertisements and are extrinsic evidence that supports interpreting the 4 counterclaim’s allegation of “offering for sale” to include a claim for damages 5 due to advertising. 6 7 reliance is misplaced. 476 F. App’x 913 (2d Cir. 2012) (summary order). Whatever 8 persuasive value Feldman offers here is negated by the fact that Feldman is 9 decided under Pennsylvania law, which limits the duty to defend to claims Liberty relies on Feldman Law Group, P.C. v. Liberty Mutual Ins. Co., but that 10 reasonably implied in the “four corners” of the complaint. Id. at 915 17 (“Under 11 Pennsylvania law—which the parties agree applies in this case—an insurer s 12 duty to defend and indemnify must be determined solely from the language of 13 the complaint against the insured.”(internal quotation marks and brackets 14 omitted)). Because Pennsylvania interprets claims for coverage based only on the 15 allegations of the complaint, Feldman properly concluded there was no coverage 16 because “neither the substantive allegations nor the demands for relief suggest 17 that any advertisement itself infringed [plaintiff’s] intellectual property rights.” 18 1 Id. at 916. If this case arose under Pennsylvania law, we might well find Feldman 2 persuasive here. However, this case arises under New York law, which dictates 3 that the insurer, and the courts, are to look beyond the four corners of the 4 complaint in determining if coverage is available. 5 6 obligation did not arise until after it was provided with Buyer’s Direct’s 7 discovery demands. High Point argues that Liberty waived its right to challenge 8 the amount of damages on appeal when it entered into a prejudgment stipulation 9 that provided, in relevant part: Finally, Liberty argues that if it were obligated to provide a defense, its 19 The total amount of defense costs necessarily and reasonably incurred related to the defense of the counterclaims . . . is $1,350,000 . . . The parties stipulate and agree that this stipulation resolves the remaining issues left to be tried, and there is nothing left to be tried or litigated before Judgment may be entered[.] App’x at 1192. High Point argues that read together, these issues preclude 20 Liberty from appealing the issue of how much is owed for defense costs. 21 22 tried or litigated before Judgment may be entered,” but it does not waive 10 11 12 13 14 15 16 17 18 We disagree. The stipulation does state that there are no issues “left to be 19 1 Liberty’s right to appeal. High Point does not claim that it does. And as Liberty 2 did not waive its right to appeal, it is entitled to argue on appeal that the 3 “offering for sale” language in the underlying suit did not trigger a duty to 4 defend and that its liability is limited, at most, to the defense costs incurred after 5 it became aware of the discovery demands upon High Point in the underlying 6 suit. 7 8 district court before the stipulation was signed. The district court and the parties 9 were discussing the amount High Point spent in legal fees. Liberty’s counsel The point is underscored by a colloquy between Liberty’s counsel and the 10 sought to clarify whether the district court was “relying on the offering for sale, 11 and relying on that, and that alone triggers a duty to defend, that’s one thing. But 12 during your Honor’s decision, you mentioned interrogatories and document 13 requests. “ App’x at 1056. Liberty’s counsel argued that if the discovery demands 14 were the primary reason for the district court’s finding that it had a duty to 15 defend, then its liability for legal fees did not arise until High Point provided it 16 with those documents. Counsel then asked the district court if “your Honor was 17 relying solely on the term ‘offer for sale.’” App’x at 1057. The district court 20 1 replied, “in my rationale, it’s not just the interrogatory and document request, 2 though I find that those make the case compelling; . . . [m]y decision is based on 3 the offering for sale.” Id. Knowing that that the district court was ruling that 4 Liberty was liable for all defense costs, the insurer sensibly agreed to the amount 5 of those costs and also sensibly agreed that there was nothing left to be tried 6 before entering judgment. But the stipulation does not bar Liberty from arguing, 7 on appeal, that its liability is limited to High Point’s defense costs incurred after 8 the Liberty was made aware of the discovery demands. 9 Turning to the merits, we agree with Liberty’s position. “[T]he insurer 10 [must] provide a defense when it has actual knowledge of facts establishing a 11 reasonable possibility of coverage.” Fitzpatrick, 78 N.Y.2d at 67; Stellar Mech. 12 Servs. of New York, Inc. v. Merchants, Ins. of New Hampshire, 903 N.Y.S.2d 471, 475 13 (2d Dep’t 2010) (Insurer’s duty to defend arose only after service of second 14 complaint, which “suggested, for the first time, a reasonable possibility of 15 coverage” under the insurance policy). Liberty was not provided with the 16 discovery demands until February 12, 2013. We thus vacate the district court’s 21 1 judgment and remand so that the district court may determine the amount of 2 legal fees incurred from February 12, 2013, onward. CONCLUSION 3 4 For the reasons given above, we affirm the district court’s determination 5 that Liberty owed High Point a defense, vacate the damages award and remand 6 for further proceedings consistent with this opinion. 22 Appendix 23 24 25 Jon O. Newman, Circuit Judge, concurring in part and in the result: The issue on this appeal from a judgment imposing upon an insurer the total costs of defending a claim against its insured is whether and when a counterclaim against an insured in an underlying lawsuit triggered the insurer’s duty to defend. I concur in all of Judge Pooler’s opinion except the portion interpreting and attaching significance to the phrase “offering for sale” in the counterclaim and also concur in the result, which obliges the insurer to pay a yet to be determined portion of its insured’s defense costs in the underlying suit. I write separately to explain my disagreement with part of Judge Pooler’s opinion. Paragraph (1)(a) of Coverage B of policy No. YV5 Z21 093433 020 (“the Policy”) issued by a group of companies known collectively as Liberty Mutual (“Liberty”) obligates it to pay those sums that its insured, High Point Design LLC (“High Point”), becomes legally obligated to pay for “‘personal and advertising injury’ to which this insurance applies.”1 Joint Appendix (“JA”) 559. Paragraph V(2)(b)(7) of the policy defines “personal and advertising injury” to include injury arising out of the “offense” of “[i]nfringing upon another’s . . . trade dress . . . in It is not clear why the seemingly different categories of “personal injury” and “advertising injury” are combined into one provision. 1 1 your ‘advertisement.’” JA 535 (emphasis added). Paragraph V(1) of the policy defines “advertisement” as “a paid announcement that is . . . published in the print . . . media . . . about your . . . products . . . for the purpose of attracting customers.” JA 534. The precise issue is whether and when, in the underlying suit, High Point faced a claim of “advertising injury” arising from trade dress infringement in one or more of its advertisements. That suit began with High Point’s complaint seeking a declaration that a design patent issued to the defendant Buyer’s Direct, Inc. (“BDI”) for its Snoozie slippers (“the ‘183 patent”) was invalid. BDI responded with a counterclaim asserting two causes of action: (1) a claim that the design of High Point’s Fuzzy Babba slippers infringed BDI’s design patent, and (2) a claim that the trade dress of the Fuzzy Babba slippers infringed the trade dress of the Snoozie slippers. BDI’s counterclaim against High Point did not allege any “advertising injury.” Nor was there an allegation in the counterclaim that any of High Point’s advertisements had injured BDI.2 Nevertheless, the District Court ruled that The only reference to “advertising” in BDI’s counterclaim was that the trade dress of BDI’s slippers had acquired secondary meaning because of BDI’s advertising and promotion. That allegation supported BDI’s claim of trade dress infringement, but had no bearing on whether the counterclaim triggered Liberty’s duty to defend because the 2 2 Liberty’s duty to defend arose because of language in BDI’s claim of patent infringement. That claim alleged that High Point had infringed the ‘183 patent by “offering for sale” its Fuzzy Babba slippers. The District Court ruled that “offering for sale” includes advertising. Judge Pooler’s opinion also says that “an ‘offer for sale’ extends to advertising,” although that opinion ultimately and wisely declines to rely solely on the “offering for sale” language. Instead, the opinion states that the “offer for sale” language “coupled with the discovery demands seeking advertising materials in the underlying litigation” triggered Liberty’s duty to defend. Judge Pooler’s opinion supports its expansive interpretation of “offering for sale” by analogy from what this Court said about “marketing” in Century 21, Inc. v. Diamond State Insurance Co., 442 F.3d 79 (2d Cir. 2006). We there noted that although “marketing” includes activities that are not advertising, “the term also must be understood to refer to activities that accord with the common use of ‘advertising.’” Id. at 83. “Similarly,” Judge Pooler’s opinion states, “while the term Policy excluded coverage for trade dress infringement by a product, and provided coverage for trade dress infringement only in an advertisement. 3 ‘offer for sale’ includes activities that are not advertising, it also includes advertising activity.” The terms “marketing” and “offering for sale,” however, are simply not similar. Of course, “marketing” includes “advertising,” which is one of the principal techniques of marketing. Judge Pooler’s opinion contends that “the purpose of most advertising is to ‘offer for sale’ various goods and services.” Not so. The purpose of most (perhaps all) advertising is to persuade the public to buy the advertised goods and services. “Offering for sale” is simply the act of making a product available for sale. It is a distortion of language to say that “offering for sale” sometimes means “advertising.” And even if an allegation of “offering for sale” could sometimes mean advertising and trigger a duty to defend under some liability insurance policies, it cannot have such a strained meaning here under a policy that defines advertising to mean published announcements in print media. The straightforward meaning of “offering for sale” in the underlying lawsuit is readily apparent from the obvious reason why BDI used the phrase in its counterclaim alleging patent infringement. Offering for sale a patented invention is one of the ways to infringe a patent. See 35 U.S.C. § 271(a). BDI used 4 the phrase to render sufficient its patent infringement claim, not to assert an advertising injury claim. This Court previously decided in Feldman Law Group, P.C. v. Liberty Mutual Insurance Co., 476 F. App’x 913 (2d Cir. 2012), that “offering for sale” did not include “advertising.” Judge Pooler’s opinion accords no weight to Feldman because it was decided under Pennsylvania law, which limits consideration of the scope of duty to defend claims to the face of an underlying complaint, whereas New York law, applicable to this case, permits consideration of materials outside the underlying complaint. That distinction permits us to look beyond the wording of BDI’s counterclaim to decide this case, but it does not diminish the force of what Feldman said about the words “offering for sale” in the complaint in that case. The words “offering for sale” did not trigger a duty to defend in Feldman, and they do not do so here.3 Judge Pooler’s opinion also finds some support for its expansive view of “offering for sale” from language in this Court’s opinion in R.C. Bigelow, Inc v. Liberty Mutual Insurance Co., 287 F.3d 242 (2d Cir. 2002). That decision, however, sheds no light on the meaning of “advertising injury” in a policy that defines that phrase to include “infringing upon another’s . . . trade dress . . . in your ‘advertisement.’” The definition of advertising injury in the policy in Bigelow did not include trade dress infringement in an advertisement. Instead, the definition included “[c]opying . . . advertising ideas or advertising style,” id. at 245 & Appx. A 35, ¶ V(1)(d), and our Court’s decision rather generously ruled that “to the extent that Bigelow [, the insured,] allegedly copied Celestial’s [the plaintiff in the underlying suit] packaging and displayed Bigelow’s 3 5 Judge Pooler’s opinion salvages High Point’s attempt to impose a duty to defend obligation on Liberty Mutual by relying on BDI’s discovery demand in the underlying suit for “[a]ll advertising . . . documents . . . referring and/or relating to High Point’s Accused Products.” Doc. Req. No. 22. This demand, her opinion concludes, triggered Liberty’s duty to defend, and hence liability for High Point’s defense costs, but only those incurred after the date when Liberty was provided with the discovery demand. Before considering that conclusion, I note that by starting Liberty’s liability for defense costs no earlier than the date when Liberty became aware of BDI’s document request, Judge Pooler’s opinion effectively renders its interpretation of the “offering for sale” language in BDI’s counterclaim dictum. The opinion’s holding, with which I agree for reasons explained below, is based on Liberty’s awareness of BDI’s document request. If the existence of the words “offering for sale” in the patent infringement portion of BDI’s counterclaim, whatever their meaning, triggered liability under the Policy, that liability would have covered defense costs incurred from the date Liberty became aware of BDI’s counterclaim. That was the District Court’s holding, which is now vacated. packaging in published advertisements, the [underlying] complaint sufficiently alleged that Bigelow copied Celestial’s ‘advertising ideas or advertising style,’” id. at 247. 6 Whether knowledge of BDI’s discovery demand rendered Liberty liable for defense costs in the underlying suit incurred after acquiring such knowledge is a somewhat close question. As relevant to this case, the Policy does not oblige Liberty to defend claims for all injuries arising from advertising High Point’s slippers. From the universe of all such claims, it covers only claims for slipper advertising that infringes another product’s trade dress. It is arguable that Liberty’s liability for defense costs began not when Liberty became aware of BDI’s document demand, but only later when High Point assembled its response to the document request and brought to Liberty’s attention particular ads depicting the Fuzzy Babba slippers. Such ads, viewed in light of the Policy’s coverage of liability for trade dress infringement in an advertisement, would have shown Liberty that its insured faced at least a reasonable risk of liability to BDI. However, it was so likely that some of High Point’s ads for its slippers would show a photograph or a drawing of them that knowledge of the document demand for all ads for High Point’s accused products sufficed to trigger an obligation to defend and hence liability for defense costs incurred after knowledge of the demand. For these reasons I concur in Judge Pooler’s opinion, with the exception noted above, and also concur in this Court’s judgment remanding for 7 determination of the amount of the defense costs incurred after Liberty became aware of the document demand. 8

Primary Holding

As used in the counterclaims and with the additional context of the discovery demands in the underlying litigation, the term "offering for sale" includes advertising, such that the insurer owes the insured a defense.

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