237 F. Supp. 3d 674
S.D. Ohio2017Background
- High Five Sportswear sued H5G, LLC for trademark infringement, false designation of origin (Lanham Act), cybersquatting, deceptive trade practices, and unfair competition based on use of variations of the "High Five" marks and the domain high5gear.com.
- H5G tendered the High Five suit to its commercial insurer, Selective Insurance Company of America, under the policy’s "personal and advertising injury" coverage; Selective denied the claim and H5G sued for declaratory relief, breach of contract, and bad faith.
- Selective’s commercial general liability policy (June 4, 2015–June 4, 2016) defines "personal and advertising injury" to include infringement of copyright, trade dress, or slogan in an "advertisement," but expressly excludes infringement of trademark and related intellectual property, and contains a prior-publication exclusion.
- The complaint alleged the high5gear.com website was created in November 2009 (before the Selective policy), and that H5G registered and used that domain in allegedly bad-faith ways.
- Selective moved for summary judgment arguing (1) High Five’s claims are for trademark infringement and cybersquatting, which are not covered by the policy’s "personal and advertising injury" grant, and (2) several policy exclusions (including prior-publication and an intellectual-property exclusion) bar coverage; H5G disputed coverage and sought discovery on bad faith.
- The court concluded, as a matter of law, that the High Five claims are trademark/cybersquatting claims (not slogan or trade dress infringement), coverage is not triggered, the prior-publication and IP exclusions apply, and therefore Selective owes no duty to defend or indemnify; summary judgment for Selective was granted and H5G’s complaint dismissed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Duty to defend — does complaint trigger "personal and advertising injury" coverage? | H5G: Complaint can be read to allege trade dress or slogan infringement covered by the policy (relying on Fireman’s Fund). | Selective: Claims are trademark infringement and cybersquatting, which are not covered by the policy language. | Court: Held claims are trademark/cybersquatting (not slogan/trade dress); coverage not triggered. |
| Effect of prior-publication / timing | H5G: Complaint does not allege infringement before policy inception. | Selective: Complaint alleges website/domain established in 2009 (before policy), so prior-publication exclusion applies. | Court: Held prior-publication exclusion applies and bars coverage. |
| Intellectual-property exclusion (trademark/IP) and exceptions | H5G: Exclusions do not apply / exceptions (advertisement exception) restore coverage. | Selective: Policy excludes infringement of trademark and other IP; exception covers only trade dress/slogan/copyright in advertisement. | Court: Held IP exclusion unambiguous and excludes trademark/cybersquatting; exception inapplicable because claims are not trade dress/slogan/copyright. |
| Bad faith and breach claims | H5G: Denial was wrongful; discovery needed to prove bad faith. | Selective: Denial was reasonable as no coverage; bad faith and breach fail as matter of law. | Court: Held no bad faith or breach because denial was reasonable given lack of coverage; summary judgment for Selective. |
Key Cases Cited
- Fireman’s Fund Ins. Co. of Wis. v. Bradley Corp., 261 Wis.2d 4, 660 N.W.2d 666 (Wis. 2003) (insurance duty-to-defend analysis comparing complaint allegations to policy advertising-injury language)
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burden-shifting principles)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment standard and need for evidence to create genuine dispute)
- Hugo Boss Fashions, Inc. v. Fed. Ins. Co., 252 F.3d 608 (2d Cir.) (distinguishing slogans, house marks, and product marks)
- Cincinnati Ins. Co. v. Zen Design Grp., Ltd., 329 F.3d 546 (6th Cir.) (definition of slogan and related trademark principles)