Sterngold Dental, LLC v. HDI Global Insurance Co.
Opinion
*5 This appeal gives us an opportunity to sink our teeth into a sophisticated insurance coverage question: we must construe the scope of the so-called intellectual property exclusion (IP exclusion) to the personal and advertising injury coverage under a standard commercial general liability policy (the Policy) issued by defendant-appellee HDI Global Insurance Company (HDI) to plaintiff-appellant Sterngold Dental, LLC (Sterngold). Concluding, as we do, that Sterngold's arguments lack bite, we affirm the district court's dismissal of Sterngold's action for failure to state a claim upon which relief can be granted.
I. BACKGROUND
The relevant facts are undisputed. Sterngold manufactures and sells dental products. To safeguard its business operations, Sterngold purchased the Policy (which covered Sterngold's commercial activities during the calendar year 2016).
In pertinent part, the Policy obligated HDI to defend and indemnify Sterngold against claims arising out of "personal and advertising injury." Withal, coverage for such injuries was subject to certain exclusions. A specific exclusion - the IP exclusion - pretermitted coverage for personal and advertising injury "arising out of the infringement of copyright, patent, trademark, trade secret or other intellectual property rights." The case at hand turns on the applicability vel non of this exclusion.
The circumstances that sparked this litigation can be succinctly summarized. In May of 2016, Intra-Lock International, Inc. (Intra-Lock), a competitor in the market for dental products, sued Sterngold in the United States District Court for the Southern District of Florida. Count 3 of its complaint alleged, inter alia, that Sterngold infringed Intra-Lock's registered OSSEAN trademark - a trademark denoting a component of its osseointegrative dental implant coating product - by using nearly identical marks, OSSEO and OSSEOs, for a nearly identical product. 1 Sterngold asked HDI to defend the suit and provide indemnification pursuant to the Policy. HDI refused Sterngold's request, denying coverage under the Policy. When Sterngold reiterated its demand for defense and indemnification, HDI again demurred.
Sterngold proceeded to settle the Intra-Lock suit. At that point, it made a third attempt to engage HDI. This time around, Sterngold asserted that the Policy required that HDI reimburse Sterngold for the settlement amount. Once again, HDI turned a deaf ear to Sterngold's entreaties.
Invoking diversity jurisdiction,
see
II. ANALYSIS
We review a district court's dismissal for failure to state a claim de novo.
*6
See
Artuso
v.
Vertex Pharm., Inc.
,
Since this case arises in diversity jurisdiction,
2
state law supplies the substantive rules of decision.
See
Erie R.R. Co.
v.
Tompkins
,
In Massachusetts, an insurer's duty to defend arises when the facts - in the complaint and known to the insurer - generally demonstrate a possibility that the liability claim falls within the scope of the insurance policy.
See
B&T Masonry Constr. Co.
v.
Pub. Serv. Mut. Ins. Co.
,
An insurer's duty to indemnify the insured is narrower than its duty to defend.
See
As a general matter, it is the insured's burden to show that the insuring agreements - that is, the overall coverage provisions of a policy - apply in a given situation.
See
Vt. Mut. Ins. Co.
v.
Zamsky
,
Against this backdrop, the case at hand presents a straightforward question about the meaning and effect of the IP exclusion. Sterngold's claim is that Intra-Lock's complaint asserted an advertising injury within the scope of the coverage afforded by the Policy. As such, Sterngold insists that HDI was obligated to defend it in the Intra-Lock suit and furnish indemnification for any resulting damages (including the eventual settlement). HDI rejoins that, even if the injury alleged falls within the general language of the insuring agreements, the injury was squarely within the crosshairs of the IP exclusion and, thus, was excluded from coverage.
We set the stage. In pertinent part, the Policy affords coverage for "sums that the insured becomes legally obligated to pay as damages because of 'personal and advertising injury.' " The Policy defines "personal and advertising injury" to include the use of "another's advertising idea" or "[i]nfringing upon another's copyright, trade dress or slogan in [an] 'advertisement.' " The Policy further provides that publication on the internet may constitute an advertisement. Sterngold argues that the Intra-Lock complaint alleged a covered advertising injury - principally, the use of Intra-Lock's advertising idea through the inclusion of the OSSEO and OSSEOs trademarks in Sterngold's online advertising.
The phrase "advertising idea," as used in the Policy, is somewhat nebulous - but it is not without limits. The Supreme Judicial Court of Massachusetts recently offered some helpful clarification: "[i]f the insured took an idea for soliciting business or an idea about advertising, then the claim" constitutes an advertising injury for the use of another's advertising idea.
Holyoke Mut. Ins. Co.
v.
Vibram USA, Inc.
,
In its suit against Sterngold, Intra-Lock alleged that it "acquired value, name and brand recognition, and goodwill in the OSSEAN mark as a result of continual and substantial advertising." Thus, Sterngold's use of "confusingly similar marks OSSEO and OSSEOs with osseointegrative dental implant coatings in internet advertising ... [was] likely to cause confusion, mistake, and deceive third parties" with respect to an imagined affiliation between Intra-Lock and Sterngold. Given these allegations, Sterngold contends that the sums it paid in settlement were for its appropriation of Intra-Lock's advertising idea and, therefore, fell within the coverage of the Policy.
It is not clear to us that Intra-Lock's allegations concerning the OSSEO and OSSEOs marks can be said to embody an "advertising idea." On the one hand, Intra-Lock's OSSEAN mark could be considered an "idea for soliciting business."
Vibram
,
Here, however, we need not decide the question of whether Intra-Lock's OSSEAN mark, as described in its complaint, constituted an "advertising idea." Rather than *8 drill down into this muddy terrain, we simply assume, favorably to Sterngold, that Intra-Lock's complaint advanced a claim for an advertising injury.
Even with this favorable assumption in place, Sterngold does not find safe passage. The most formidable obstacle that blocks its way is the IP exclusion, which provides that:
This insurance does not apply to: ... "Personal and advertising injury" arising out of the infringement of copyright, patent, trademark, trade secret or other intellectual property rights. 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.
The question for us to resolve, therefore, reduces to whether the advertising injury alleged in Intra-Lock's complaint arose out of the claimed infringement of Intra-Lock's trademark.
Under Massachusetts law, "arising out of" indicates a wide range of causation.
See
Brazas Sporting Arms, Inc.
v.
Am. Empire Surplus Lines Ins. Co.
,
To begin, Intra-Lock's complaint labeled its claim as one for the "Infringement of [its] OSSEAN Trademark." The complaint then asserted that, by means of its described conduct, Sterngold "willfully infringed upon and diluted [Intra-Lock's] trademark OSSEAN." Although part of the concern expressed by Intra-Lock involved the content of Sterngold's online advertising, the online advertising was of concern because of how that activity impacted the uniqueness and strength of Intra-Lock's OSSEAN mark. Given the gravamen of Intra-Lock's claim, the IP exclusion fits like a glove. Consequently, the conclusion is irresistible that HDI owed no duty either to defend or indemnify Sterngold with respect to Intra-Lock's claim.
To be sure, the concept of an advertising injury sometimes may overlap with the concept of trademark infringement.
Cf.
State Auto Prop. & Cas. Ins. Co.
v.
Travelers Indem. Co. of Am.
,
Sterngold fights tooth and nail to undermine this conclusion. Even so, Sterngold does not point to any ambiguity in the policy language pertaining to trademark infringement claims.
Cf.
Certain Interested Underwriters at Lloyd's, London
v.
Stolberg
,
But reality has sharp teeth, and a straightforward reading of the language punctures Sterngold's proposed construction. The first sentence of the IP exclusion lists a series of IP-related claims, including trademark infringement. Each specifically articulated claim is separated from the next by a comma. The list concludes with the catchall phrase "or other intellectual property rights." This syntax, combined with the use of the disjunctive "or," clearly differentiates the listed IP-related claims from the catchall phrase "other intellectual property rights." Here, moreover, the catchall phrase is repeated in the second sentence of the exclusion. It is only in connection with this phrase - not in connection with the listed IP-related claims - that the "use of another's advertising idea" is excepted from the reach of the exclusion. Just as "[e]very word in an insurance contract must be presumed to have been employed with a purpose,"
Bos. Gas Co.
v.
Century Indem. Co.
,
The short of it is that even if a trademark infringement claim involves an injury stemming from the use of an advertising idea, the catchall phrase "other intellectual property rights" will not encompass the claim. Any other reading would render nugatory the plain language contained in the first sentence of the IP exclusion. That path is not open to us.
See
Alicea
v.
Machete Music
,
Sterngold has a fallback position. It argues that its deployment of the OSSEO and OSSEOs marks in internet advertising was covered under the Policy because the marks were actually slogans and, thus, came within the built-in exception to the IP exclusion (captured in the last sentence of that exclusion). Building on this porous foundation, Sterngold suggests that even if the advertising injury arose from a trademark *10 infringement claim, the carve-out for slogan infringement validated its quest for coverage. We think not.
Of course, the exclusion to the exclusion has the potential to salvage some claims.
Cf.
High Point Design, LLC
v.
LM Ins. Co.
,
We add, moreover, that in reading the secondary exclusion - as in reading insurance policies generally - undefined words should be given their ordinary meaning.
See
Easthampton Congregational Church
v.
Church Mut. Ins. Co.
,
To cinch the matter, nothing in the record suggests that Intra-Lock ever used OSSEAN as a slogan. Instead, Intra-Lock claimed that the mark was "distinctive and famous within the meaning of [the trademark statute]." At bottom, Intra-Lock's claim was that OSSEAN is a "source-identifier,"
Bos. Duck Tours, LP
v.
Super Duck Tours, LLC
,
"It is said that all good things come to an end,"
State Police Ass'n of Mass.
v.
Comm'r of Internal Revenue
,
III. CONCLUSION
We need go no further. For the reasons elucidated above, the judgment of the district court is
Affirmed .
Intra-Lock's complaint contained several other counts, but the controversy here is limited to count 3. Accordingly, we make no further mention of the other counts set forth in Intra-Lock's complaint.
HDI originally challenged the propriety of diversity jurisdiction, asserting that Sterngold had not identified the citizenship of its members.
See
,
e.g.
,
ConnectU, LLC
v.
Zuckerberg
,
Contrary to Sterngold's importunings, our reading of the IP exclusion is not in tension with
Vibram
.
See
We do not gainsay that, in some circumstances, a trademark may do double duty as a slogan.
See
,
e.g.
,
L.L. Bean, Inc.
v.
Drake Publishers, Inc.
,
Reference
- Full Case Name
- STERNGOLD DENTAL, LLC, Plaintiff, Appellant, v. HDI GLOBAL INSURANCE COMPANY, Defendant, Appellee.
- Cited By
- 11 cases
- Status
- Published