Superformance Intern. v. Hartford Casualty Ins.
| Decision Date | 11 June 2003 |
| Docket Number | No. 02-1718.,02-1718. |
| Citation | 332 F.3d 215 |
| Parties | SUPERFORMANCE INTERNATIONAL, INCORPORATED, Plaintiff-Appellant, v. HARTFORD CASUALTY INSURANCE COMPANY, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Fourth Circuit |
ARGUED: David A. Gauntlett, Gauntlett & Associates, Irvine, California, for Appellant.
Stacey Ann Moffet, Eccleston
& WOLF, P.C., Baltimore, Maryland, for Appellee.
ON BRIEF: James A. Lowe, Gauntlett & Associates, Irvine, California; Douglas E. Miller, Patten, Wornom, Hatten & Diamonstein, Newport News, Virginia, for Appellant. Matthew W. Lee, Eccleston & Wolf, P.C., Washington, D.C., for Appellee.
Before WIDENER, WILKINSON, and NIEMEYER, Circuit Judges.
Affirmed by published opinion. Judge NIEMEYER wrote the opinion, in which Judge WIDENER and Judge WILKINSON joined.
Superformance International, Inc. ("Superformance") contends that Hartford Casualty Insurance Company ("Hartford"), as its insurer under a commercial general liability policy, owes it a defense and indemnity in a trademark infringement action brought against Superformance in the District of Massachusetts by Carroll Shelby, Carroll Shelby Licensing, Inc., Shelby American, Inc., and Ford Motor Company. The district court granted summary judgment to Hartford, ruling essentially that the policy did not cover injuries arising from conduct that preceded the policy's issuance and that the underlying complaint did not allege claims falling within coverage for advertising injury. For reasons that differ somewhat from those given by the district court, we affirm.
Superformance, an Ohio corporation with its principal place of business in Newport News, Virginia, is a manufacturer of specialty motor vehicles, including replicas of classic cars or "replicars," kit cars, and related parts and accessories. Among the replicars it manufactures and promotes for sale are race cars and roadsters modeled after the "Cobra" and "Shelby Cobra" designs, and in connection with their sale, Superformance employs the use of the names Cobra and Ford and allegedly other trademarks connected with the original Cobra vehicles.
The Cobra racing cars, after which Superformance's replicars are modeled, were designed and manufactured in the 1960s by Carroll Shelby in collaboration with the Ford Motor Company, and the vehicles used the trade name "Cobra" and designs depicting the cobra snake. Ford, which owns numerous trademarks that include "Cobra" and the snake, has granted Carroll Shelby and his businesses, Carroll Shelby Licensing, Inc. and Shelby American, Inc., an exclusive license to use the trademarks relating to Cobra and the cobra snake designs for the vintage automobiles created, designed, and manufactured by Shelby. Carroll Shelby owns numerous trademarks that include "Shelby."
In December 2000, Shelby commenced a trademark infringement action against Superformance in the District of Massachusetts (the "Massachusetts Litigation"). As originally filed, Shelby's complaint alleged, in six counts, trademark infringement and dilution under §§ 32 and 43 of the Lanham Act (15 U.S.C. §§ 1114 and 1125) and State common law, as well as unfair competition under State common and statutory law. In August 2001, Shelby amended its complaint to allege a seventh count for violation of the United States import statutes prohibiting the importation of counterfeit products, particularly motor vehicles using Shelby's trademarks. Three months later, in November 2001, Ford Motor Company intervened in the Massachusetts Litigation, filing its own complaint in six counts that parallel Shelby's original six counts. It is in connection with this Massachusetts Litigation that Superformance seeks coverage from Hartford under the insurance policy issued by it.
Superformance did not purchase its policy from Hartford until three months after Shelby commenced its action in the Massachusetts Litigation. Specifically, on March 10, 2001, Superformance purchased a one-year commercial general liability policy to cover liability for, among other types of injury, personal and advertising injury. The policy was an "occurrence" policy, which means that it covered only personal and advertising injury "if the offense [was] committed in the `coverage territory' [which includes the United States] during the policy period" of March 9, 2001, to March 9, 2002. After Superformance purchased this policy from Hartford, Shelby added the seventh count to its complaint in the Massachusetts Litigation relating to Superformance's imports of counterfeit vehicles and Ford intervened to file its complaint asserting trademark infringement, trademark dilution, and unfair competition claims.
The insurance policy defines "personal and advertising injury" in relevant part as injury "arising out of one or more of the following offenses":
d. Oral or written publication of material that slanders or libels a person or organization or disparages a person's or organization's goods, products or services; [or]
e. Oral or written publication of material that violates a person's rights of privacy; or
f. Copying, in your "advertisement", a person's or organization's "advertising idea" or style of "advertisement"; [or]
g. Infringement of copyright, slogan, or title of any literary or artistic work, in your "advertisement."
The policy excludes coverage for injury:
(2) Arising out of oral or written publication of material whose first publication took place before the beginning of the policy period; [or]
* * *
(9) Arising out of the infringement of trademark, trade name, service mark or other designation of origin or authenticity.
Several months after Superformance purchased the policy from Hartford, it tendered the defense of the Massachusetts Litigation to Hartford, characterizing the suit as one for "Federal Trademark Infringement, Federal and State Trademark Dilution and related causes of action." Hartford denied coverage under the policy, summarizing its position:
Plaintiff's complaint does not state any claim that could even arguably meet the definition of "Occurrence", "Bodily Injury", "Property Damage" or "Personal and Advertising Injury" as stated in the policy. In addition, trademark related claims are specifically excluded [from coverage]. Moreover, to the extent any "Personal and Advertising Injury" occurred prior to March 9, 2001, the policy expressly excludes coverage for material first published before the beginning of the policy period. With respect to "Advertising Injury", plaintiff does not allege any injury sustained from an "advertisement" of the insured.
Superformance thereafter commenced this action for breach of the insurance contract, seeking a declaratory judgment that Hartford's insurance policy covers the claims alleged in the Massachusetts Litigation and that Hartford breached its duties under the policy. The complaint also seeks money damages, including the costs incurred in defending the Massachusetts Litigation.
On cross-motions for summary judgment, the district court entered judgment in favor of Hartford, holding that "any potential claim [is] precluded under the Policy's first publication exclusion." The court found that the Shelby complaint as amended and the Ford complaint, both of which were filed in the Massachusetts Litigation after the issuance of the policy, were subject to the first-publication exclusion because they used the same language as the original Shelby complaint that preceded the policy and the gravamen of the complaints was the same. The court characterized Superformance's claim against Hartford as "an attempt to obtain retroactive insurance," which the policy prohibited by limiting coverage to occurrences during the policy period and by including the first publication exclusion. The court also held that even if the first-publication exclusion was not applicable to all of the allegations in the Massachusetts Litigation, most of the offenses asserted against Superformance did not qualify as "personal and advertising injury" as defined by the policy. As to claims of trade dress infringement, which the district court found would be covered by the Hartford policy, the court concluded that the allegations failed to state facts sufficient to support any such claims.
From the district court's judgment granting Hartford's motion for summary judgment and denying Superformance's motion, Superformance filed this appeal.
Superformance concedes on appeal that Counts I through VI of the Shelby complaint do not implicate Hartford's duty to defend because these counts were alleged prior to the policy period and therefore of necessity related to offenses committed before the policy period. It contends, however, that Count VII of the Shelby complaint and all of the counts of the Ford complaint, which were added to the Massachusetts Litigation after Superformance secured the insurance policy, allege violations that were committed during the policy period and therefore require a defense under the policy.
Because we cannot, as a matter of law, foreclose the possibility that Count VII of the Shelby complaint and the entire Ford complaint allege some conduct occurring during the policy period, we agree that coverage for these counts cannot categorically be barred by invocation of the policy period — i.e., March 9, 2001, to March 9, 2002. Accordingly, with respect to those counts — Count VII of the Shelby complaint and the six counts of the Ford complaint — we turn to the language of the policy to determine whether it affords a defense to Superformance.
Superformance contends that there are "three distinct pathways to a defense herein." First, it argues that the claims for trademark dilution and unfair competition amount to disparagement of a competitor's goods and therefore fall within the provision of the policy covering injury arising out of any "written publication of material that ... disparages a...
To continue reading
Request your trial
-
Resource Bankshares v. St. Paul Mercury Ins. Co.
...claims alleged [in the complaint] are covered by the policy.'" Am. Online, 347 F.3d at 93 (quoting Superformance Int'l, Inc. v. Hartford Cas. Ins. Co., 332 F.3d 215, 220 (4th Cir.2003)); see Erie Ins. Exch. v. State Farm Mut. Auto. Ins. Co., 60 Va. Cir. 418, 423 (Va. Cir. Ct.2002) (courts a......
-
Kubit v. Mag Mut. Ins. Co.
...of material whose first publication took place before ... inception of this policy.” In Superformance International Inc. v. Hartford Casualty Insurance Co., 332 F.3d 215, 224 (4th Cir.2003), the Fourth Circuit concluded that this exclusion applied when the facts in the underlying complaint ......
-
Foliar Nutrients, Inc. v. Nationwide Agribusiness Ins. Co.
...which are not excluded under the policy, with PFS' actual claims of Lanham Act violations. (Id. ) See alsoSuperformance Int'l, Inc. v. Hartford Cas. Ins. Co. , 332 F.3d 215 (4th Cir.2003) ; Liberty Corp. Cap ital Ltd. v. Security Safe Outlet, Inc. , 937 F.Supp.2d 891 (E.D.Ky.2013). The insu......
-
Resource Bankshares v. St. Paul Mercury Ins. Co.
...alleged [in the complaint] are covered by the policy.'" Am. Online, Inc., 347 F.3d at 93 (quoting Superformance Int'l, Inc. v. Hartford Cas. Ins. Co., 332 F.3d 215, 220 (4th Cir.2003)). Some courts have labeled this analysis the "eight corners rule" — analyzing the four corners of both the ......