Burgett, Inc. v. American Zurich Insurance Company

Filing 22

MEMORANDUM AND ORDER signed by Judge Morrison C. England, Jr on 11/22/11: Plaintiff's motion for summary judgment as to Defendant's duty to defend the underlying Persis action is GRANTED 8 . Plaintiff is awarded reasonable attorneys' fees for breach of its duty to defend the underlying Persis action. However, the Court requires additional briefing as to the amount of attorneys' fees to which Plaintiff is claiming. Such additional briefing from Plaintiff is to be filed not later than forty-five (45) days after this electronic order is filed. The Court orders that Plaintiff is not entitled to prejudgment interest. (Kaminski, H)

Download PDF
1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 EASTERN DISTRICT OF CALIFORNIA 10 11 BURGETT, INC., 12 Plaintiff, 13 14 No. 2:11-cv-01554-MCE-JFM v. MEMORANDUM AND ORDER AMERICAN ZURICH INSURANCE COMPANY, 15 Defendant. 16 17 ----oo0oo---- 18 19 This matter arises out of Plaintiff, Burgett Inc.’s 20 (“Plaintiff” or “Burgett”) motion for partial summary judgment 21 regarding Defendant’s alleged duty to defend the underlying 22 action filed against Plaintiff by Persis International Inc.1 and 23 Edward F. Richards (collectively, “Persis”). 24 /// 25 /// 26 1 27 28 Persis Internationl, Inc. v. Burgett, Inc., 1:09-cv-07451 (N.D. Ill. 2011). Plaintiff attached the relevant complaint in the underlying action to its complaint. (See Pl.’s Compl., filed June 08, 2011, [ECF No. 1, Ex. 2].) 1 1 Defendant, American Zurich Insurance, Inc. (“Defendant”), 2 Plaintiff’s general liability insurance carrier opposes the 3 motion. 4 GRANTED.2 For the reasons set forth below, Plaintiff’s motion is 5 BACKGROUND3 6 7 8 9 Plaintiff is a corporation organized under the laws of the State of California with its principal place of business in 10 Sacramento, California. (UF ¶ 1.) Defendant is a corporation 11 licensed to sell insurance in the State of California, with its 12 principal place of business in Illinois. (UF ¶ 2.) 13 Zurich issued to Burgett, the named insured, a general 14 commercial liability policy for the period May 9, 2003, through 15 May 9, 2004. 16 personal or advertising injury caused by an offense committed by 17 Burgett during the policy period and promises a defense of suits 18 that potentially seek those types of damages. (UF ¶ 3.) This policy provides indemnity for any (UF ¶ 4.) 19 20 21 22 23 24 25 26 27 28 2 Because oral argument will not be of material assistance, the Court orders these matters submitted on the briefs. E.D. Cal. L.R. 78-230(h). 3 This case presents almost purely legal issues. Thus, the facts are, for the most part, undisputed. Where the facts are disputed, the Court recounts Defendant’s version of the facts as it must on a motion for summary judgment. In this regard, the Court notes that, although not required by the Court’s local rules, Plaintiff did not file a separate statement of “Disputed Facts.” Thus, in laying out the relevant facts, the Court cites to Plaintiff’s statement of undisputed fact. (See Pl.’s Separate Stmt. Of Undisp. Material Fact [“UF”], filed July 7, 2011, [ECF No. 8-2].) Moreover, the Court, when necessary, cites to the declaration of Tom Lagomarsino, Vice President of Burgett, and the exhibits attached thereto. (Decl. Of Tom Lagomarsino [“Lagomarisino Decl.”], filed July 7, 2011, [ECF No. 8-3].) 2 1 According to the relevant language of the policy, 2 “‘[a]dvertisement’ means a notice that is a broadcast published 3 to the general public of specific market segments of 4 [Plaintiff’s] goods, products or services for the purpose of 5 attracting customers or supporters.”4 6 advertising injury encompasses “[o]ral or written publication, in 7 any manner, of material that slanders or libels a person or 8 organization or disparages a person’s organizations’s good, 9 products or services.” (Id.) (UF ¶ 5.) Personal or The policy also includes an 10 exclusion for “‘personal and advertising’ injury arising out of 11 the infringement of copyright, patent, trademark trade secret or 12 other intellectual property.” 13 (UF ¶ 6.) In the matter underlying this duty to defend action, Persis 14 filed a first amended complaint on March 26, 2010, in the 15 Northern District of Illinois, alleging that Plaintiff made false 16 statements to another company, Samick, about its ownership of the 17 “SOHMER” trademark, a trademark Persis alleges it owned. 18 ¶¶ 8-9.) 19 follows: 20 /// 21 /// 22 /// 23 /// 24 /// 25 /// (UF The Persis complaint, in pertinent part, alleges as 26 27 28 4 There is no dispute that the allegedly improper statement made by Burgett constitutes an advertisement in accordance with the terms of the policy. 3 1 In 2003, Samick began advertising and selling pianos bearing the SOHMER and SOHMER & CO. trademarks in the United States, including through an [i]nternet website. 2 3 At all relevant times, Burgett’s representing to samick that it had valid and enforceable rights in and to the SOHMER trademark, negotiating and entering into the purported licensing agreement with Samkick, accepting compensation from Samick under the purported licensing agreement, and holding itself out to Samick and the world as the rightful owner of the SOHMER trademark, constituted an inducement of Samick’s act of infringement and unfair competition under federal and common law. 4 5 6 7 8 9 (UF ¶ 11.) The gravamen of Persis’ underlying complaint is that 10 by “holding itself out to Samick and the world as the rightful 11 owner of the SOHMER trademark...Burgett is contributorily liable 12 for Samick’s acts of trademark infringement and unfair 13 competition under federal law and common law arising out of 14 Samick’s use of SOHMER & SOHMER & CO. trademarks.” 15 There is no dispute that the alleged wrongful conduct occurred 16 within Defendant’s 2003, 2004 and 2005 policy periods. 17 (UF ¶ 12.) 18 (Id.) Plaintiff provided Defendant notice of the Persis action on 19 November 3, 2010, thereby tendering defense of that matter in 20 accordance with the terms of the policy. 21 responded on December 13, 2010, declining to defend or indemnify 22 Plaintiff in the underlying Persis action. 23 denied defense of the action on the basis that “the definition of 24 ‘personal and advertising injury’ ha[d] not been met” and because 25 the trademark exclusion under the policy would apply to excuse 26 Defendant from defending the action. 27 /// 28 /// 4 (UF ¶ 13.) (UF ¶ 15.) Zurich (UF ¶ 16.) Defendant STANDARD 1 2 3 A motion for partial summary judgment is resolved under the 4 same standard as a motion for summary judgment. See California 5 v. Campbell, 138 F.3d 772, 780 (9th Cir. 1998). Summary judgment 6 is appropriate when it is demonstrated that there exists no 7 genuine issue as to any material fact, and that the moving party 8 is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); 9 Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970). 10 Under summary judgment practice, the moving party always bears the initial responsibility of informing the district court of the basis of its motion, and identifying those portions of “the pleadings, depositions, answers to interrogatories, and admissions on file together with the affidavits, if any,” which it believes demonstrate the absence of a genuine issue of material fact. 11 12 13 14 15 Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). 16 nonmoving party will bear the burden of proof at trial on a 17 dispositive issue, a summary judgment motion may properly be made 18 in reliance solely on the ‘pleadings, depositions, answers to 19 interrogatories, and admissions on file.’” 20 summary judgment should be entered against a party who fails to 21 make a showing sufficient to establish the existence of an 22 element essential to that party’s case, and on which that party 23 will bear the burden of proof at trial. 24 circumstance, summary judgment should be granted, “so long as 25 whatever is before the district court demonstrates that the 26 standard for entry of summary judgment, as set forth in 27 Rule 56(c), is satisfied.” 28 /// Id. at 323. 5 “[W]here the Id. at 324. Id. at 322. Indeed, In such a 1 If the moving party meets its initial responsibility, the 2 burden then shifts to the opposing party to establish that a 3 genuine issue as to any material fact actually does exist. 4 Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 5 585-87 (1986); First Nat’l Bank v. Cities Serv. Co., 391 U.S. 6 253, 288-289 (1968). 7 this factual dispute, the opposing party may not rely upon the 8 denials of its pleadings, but is required to tender evidence of 9 specific facts in the form of affidavits, and/or admissible In attempting to establish the existence of 10 discovery material, in support of its contention that the dispute 11 exists. 12 demonstrate that the fact in contention is material, i.e., a fact 13 that might affect the outcome of the suit under the governing 14 law, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986), 15 and that the dispute is genuine, i.e., the evidence is such that 16 a reasonable jury could return a verdict for the nonmoving party, 17 Id. at 251-52. 18 Fed. R. Civ. P. 56(c). The opposing party must In the endeavor to establish the existence of a factual 19 dispute, the opposing party need not establish a material issue 20 of fact conclusively in its favor. 21 claimed factual dispute be shown to require a jury or judge to 22 resolve the parties’ differing versions of the truth at trial.” 23 First Nat’l Bank, 391 U.S. at 289. 24 judgment is to ‘pierce the pleadings and to assess the proof in 25 order to see whether there is a genuine need for trial.’” 26 Matsushita, 475 U.S. at 587 (quoting Rule 56(e) advisory 27 committee’s note on 1963 amendments). 28 /// 6 It is sufficient that “the Thus, the “purpose of summary 1 In resolving the summary judgment motion, the Court examines 2 the pleadings, depositions, answers to interrogatories, and 3 admissions on file, together with the affidavits, if any. Rule 56(c); 4 SEC v. Seaboard Corp., 677 F.2d 1301, 1305-06 (9th Cir. 1982). 5 The evidence of the opposing party is to be believed, and all 6 reasonable inferences that may be drawn from the facts placed 7 before the court must be drawn in favor of the opposing party. 8 Anderson, 477 U.S. at 255. 9 out of the air, and it is the opposing party’s obligation to Nevertheless, inferences are not drawn 10 produce a factual predicate from which the inference may be drawn. 11 Richards v. Nielsen Freight Lines, 602 F. Supp. 1224, 1244-45 12 (E.D. Cal. 1985), aff’d, 810 F.2d 898 (9th Cir. 1987). 13 Finally, to demonstrate a genuine issue, the opposing party 14 “must do more than simply show that there is some metaphysical 15 doubt as to the material facts....Where the record taken as a 16 whole could not lead a rational trier of fact to find for the 17 nonmoving party, there is no ‘genuine issue for trial.’” 18 Matsushita, 475 U.S. at 586-87, 106 S. Ct. at 1356. 19 ANALYSIS 20 21 A. Duty to Defend 22 23 Plaintiff contends that Defendant improperly denied defense 24 of the underlying Persis action because the complaint “alleges 25 misstatements by [Plaintiff] regarding Persis’ legal rights to 26 the SOHMER trademark,” thus providing “potential grounds for 27 liability within [Defendant’s] ‘peronal injury’ coverage for both 28 ‘defamation’ and ‘disparagement.’” 7 1 (Pl.’s Mot. for Summ. J, filed July 07, 2011, [ECF No. 8], at 2 1:11-13.) 3 the Persis lawsuit do not assert a claim for defamation or 4 disparagement, there was and is no duty to defend.” 5 Opp’n, filed July 28, 2011, [ECF No. 10], at 1:26-28) 6 Defendant maintains that there is no conceivable theory which 7 could bring the allegations in the underlying complaint within 8 the coverage pursuant to the policy because Plaintiff’s alleged 9 statements to Samick that it owned the SOHMER trademark did not Defendant asserts that, “because the allegations in (Def.’s Similarly, 10 specifically reference Plaintiff, and thus, Plaintiff is not 11 potentially liability for disparagement or defamation. 12 Defendant argues that it has no duty to defend because the 13 trademark exclusion would apply to bar any coverage for liability 14 based on the specific claims asserted in the underlying 15 complaint. 16 Moreover, An insurer’s evidentiary burden is particularly high in a 17 duty-to-defend case. 18 of a potential for coverage,...the insurer must establish the 19 absence of any such potential.” Montrose Chem. Corp. v. Super. 20 Ct., 6 Cal. 4th 287, 300 (1993). “In other words, the insured 21 need only show that the underlying claim may fall within policy 22 coverage; the insurer must prove it cannot.” 23 While “the insured must prove the existence Id. The duty to defend extends to all suits that raise the 24 “possibility” or “potential” for coverage. 25 Co., 65 Cal. 2d 263, 275 (1966); accord Montrose, 6 Cal. 4th at 26 295 (1993); CNA Cas. of Cal. v. Seaboard Sur. Co., 176 Cal. App. 27 3d 598, 606 (1986). 28 /// 8 Gray v. Zurich Ins. 1 Courts in California have frequently stated that an insurer’s 2 duty to defend is broader than the duty to indemnify. 3 Mann Ins. Co. v. Barbara B., 4 Cal. 4th 1076, 1081 (1993). Thus, 4 under California law, an insurer must defend against groundless, 5 false, or even fraudulent claims, regardless of their merits. 6 Horace Mann, 4 Cal. 4th at 1086. 7 from its duty to defend only when “the third party complaint can 8 by no conceivable theory raise a single issue which could bring 9 it within the policy coverage.” Horace In fact, an insurer is excused Montrose, 6 Cal. 4th at 295 10 (quoting Gray v. Zurich Ins. Co., 65 Cal. 2d 263, 275 n.15 11 (1966)). 12 doubt and ultimately does not develop. 13 Saylin v. Cal. Ins. Guar. Ass’n, 179 Cal. App. 3d 256, 263 14 (1986)). 15 The duty to defend may exist even where coverage is in Id. at 295 (quoting “The determination whether the insurer owes a duty to defend 16 is usually made in the first instance by comparing the 17 allegations of the complaint with the terms of the policy.” 18 Storek v. Fid. & Guar. Ins. Underwriters, Inc., 504 F. Supp. 2d 19 803, 807 (N.D. Cal. 2007) aff’d, 320 F. App’x 508 (9th Cir. 2009) 20 (quoting Horace Mann, 4 Cal. 4th at 1081). 21 whether the facts give rise to a duty to defend is resolved in 22 the insured’s favor.” 23 Cas,, 176 Cal. App. 3d at 607). 24 beyond the specific claims set forth in the third-party 25 complaint. Indeed, “the duty to defend is so broad that as long 26 as the complaint contains language creating the potential of 27 liability under an insurance policy, the insurer must defend an 28 action against its insured....” “Any doubt as to Horace Mann, 4 Cal. 4th at 101 (citing CNA The duty to defend extends 9 1 CNA Cas., 176 Cal. App. 3d at 606. 2 repeatedly found that remote facts buried within causes of action 3 that may potentially give rise to coverage are sufficient to 4 invoke the defense duty.” 5 Eng’rs v. Fed. Ins. Co., 307 F.3d 944, 951 (9th Cir. 2002). 6 “California courts have Pension Trust Fund for Operating An insurer’s duty to defend is not limited to the face of 7 the underlying complaint. Rather, “the duty to defend arises 8 when the facts alleged in the underlying complaint give rise to a 9 potentially covered claim regardless of the technical legal cause 10 of action pleaded by the third party.” Barnett v. Fireman’s Fund 11 Ins. Co., 90 Cal. App. 4th 500, 510 (2001); see also Swain v. 12 Cal. Cas. Ins. Co., 99 Cal. App. 4th 1, 8 (2002) (emphasizing the 13 importance of examining facts alleged in the complaint). 14 addition, “facts extrinsic to the complaint also give rise to a 15 duty to defend when they reveal a possibility that the claim may 16 be covered by the policy.” 17 determining whether or not the [insurer is] bound to 18 defend...courts do not examine only the pleaded word but the 19 potential liability created by the suit.” 20 276. 21 focus on the facts of a case rather than the theory of recovery 22 in the complaint, the duty to defend should be fixed by the facts 23 which the insurer learns from the complaint, the insured, or 24 other sources. 25 insured whenever it ascertains facts which give rise to the 26 potential of liability under the policy. 27 /// 28 /// In Horace Mann, 4 Cal. 4th at 1081. “In Gray, 65 Cal. 2d at Courts have noted that because “modern procedural rules An insurer, therefore, bears a duty to defend its 10 Id. at 276-77. 1 “[T]hat the precise causes of action pled by the third-party 2 complaint may fall outside policy coverage does not excuse the 3 duty to defend where, under the facts alleged, reasonably 4 inferable, or otherwise known, the complaint could fairly be 5 amended to state a covered liability.” 6 Transp., 36 Cal. 4th 643, 654 (2005). 7 Scottsdale Ins. Co. v. MV While the duty to defend is broad, “[a]n insurer...will not 8 be compelled to defend its insured when the potential for 9 liability is tenuous and farfetched.” Lassen Canyon Nursery, 10 Inc. v. Royal Ins. Co., 720 F.2d 1016, 1018 (9th Cir. 1983). In 11 other words, the duty to defend does not require an insurer to 12 undertake a defense as to claims that are factually and legally 13 untethered from the third party’s complaint. 14 504 F. Supp. 2d at 812; Upper Deck Co. v. Fed. Ins. Co., 358 F.3d 15 608, 615-16 (9th Cir. 2004). See e.g., Storek, 16 1. 17 Defamation 18 19 Under California law,5 defamation consists of either libel 20 or slander. Cal. Civ. Code § 44. “Libel is a false and 21 unprivileged publication by writing, printing, picture, effigy, 22 or other fixed representation to the eye, which exposes any 23 person to hatred, contempt, ridicule, or obloquy, or which causes 24 him to be shunned or avoided, or which has a tendency to injure 25 him in his occupation.” Cal. Civ. Code § 45. 26 27 28 5 There is no dispute that, in this diversity action, California law applies to determine the scope Defendant’s duty to defend. 11 1 Slander consists of “a false and unprivileged publication, orally 2 uttered...which: (1) charges any person with crime, or with 3 having been indicted, convicted, or punished for crime; 4 (2) imputes in him the present existence of an infectious, 5 contagious, or loathsome disease; (3) tends directly to injure 6 him in respect to his office, profession, trade or business, 7 either by imputing to him general disqualification in those 8 respects which the office or other occupation peculiarly 9 requires, or by imputing something with reference to his office, 10 profession, trade, or business that has a natural tendency to 11 lessen its profits; (4) imputes to him impotence or a want of 12 chastity; or (5) which, by natural consequence, causes actual 13 damage. 14 The California Supreme Court, in adherence to United States 15 Supreme Court precedent, has held that “[i]n defamation actions 16 the First Amendment...requires that the statement on which the 17 claim is based must specifically refer to, or be ‘of and 18 concerning’ the Plaintiff in some way.” 19 Co. 42 Cal. 3d 1033, 1042. 20 “derives directly and ultimately from the First Amendment.” 21 Thus, in order to demonstrate that there is potential for 22 liability in the underlying Persis claim, Plaintiff must show 23 that there are factual allegations that it made specific 24 reference to Persis. 25 /// 26 /// 27 /// 28 /// Blatty v. New York Times This limitation on defamation actions Id. 12 Id. 1 In this case, Defendant’s duty to defend cannot be triggered 2 on a defamation theory because the underlying Persis complaint 3 does not allege that Plaintiff made any defamatory statement that 4 either specifically referred to, or was “of and concerning” 5 Persis. 6 Zurich policy for defamation because the “of and concerning” 7 element required to establish a claim for defamation is wholly 8 absent from the underlying complaint. 9 duty to defend is not triggered under that provision of the Thus, there is no potential for coverage under the To this end, Defendant’s 10 Zurich policy covering “material that slanders or libels a person 11 or organization” because there is no potential for coverage 12 thereunder. 13 The case law relied on by Plaintiff for its contention that 14 there is a potential for coverage under the defamation provision 15 of the policy is wholly inapposite. 16 (citing Atlantic Mutual Ins. Co. V. J. Lamb Inc., 100 Cal. App. 17 4th 1017 (2002); American Ins. Co. V. Laserage Tech. Corp., 18 2 F. Supp. 2d 296, 304 (W.D.N.Y.); Winokur, Winokur v. Commerce 19 Ins. Co., 2004 WL 1588259 (Mass. Sup. Ct.).) 20 each of those cases, the Plaintiff in the underlying action 21 specifically alleged that the Plaintiff made specific comments 22 “of and concerning” the Plaintiff in the underlying action. 23 Both J. Lamb6 and Laserage, the underlying complaint alleged that 24 the party asserting a duty to defend made statements that the 25 underlying Plaintiff was infringing a trademark. (See Pl.’s Mot at 914-19 Specifically, in In 26 6 27 28 In J. Lamb, the only California authority cited by Plaintiff, the Court did not find that the statements constituted defamation; it only found that the allegations potentially stated a claim for disparagement. 13 1 Those courts held that there was potential coverage under the 2 policy for advertising injury because the party seeking defense 3 of the underlying action made overt statements specifically 4 referencing plaintiffs and their business, according to the 5 underlying complaint. 6 there was potential coverage under the advertising injury 7 provisions of the relevant policy for charging the “underlying 8 Plaintiff and its officers and directors with malicious abuse of 9 process, malicious interference with advantageous business Moreover, in Winokur, the court held that 10 relationship, and conspiracy.” Winokur, 2004 WL 1588259 at *1. 11 Filing a lawsuit naming the underlying Plaintiff clearly 12 satisfies the specific reference requirement for stating a 13 defamation claim. 14 to demonstrate the underlying complaint meets the specific 15 reference requirement, and thus, there is no factual or legal 16 basis for Plaintiff’s contention that there is potential coverage 17 under the defamation provision of the policy. Conversely, in this case, Plaintiff has failed 18 19 2. 20 Disparagement 21 22 At its base, an action for product disparagement “involves 23 the imposition of liability for injuries sustained through 24 publication to third parties of a false statement affecting the 25 plaintiff. 26 App. 4th 161, 169 (2010) (quoting Polygram Records Inc. v. 27 Superior Court, 170 Cal. App. 3d 543, 549 (1985). 28 /// Total Call Int’l Inc. v. Peerless Ins. Co., 181 Cal. 14 1 Under California law, in order to establish a duty to defend, 2 Burgett must show that the underlying Plaintiff alleges that it 3 made derogatory statements about Persis products, causing it 4 pecuniary damages. 5 Ins. Co., 40 F.3d 968, 9472-973 (9th Cir. 1994); Truck Ins. 6 Exchange v. Bennet, 53 Cal. App. 4th 75, 89 (1997). 7 element of a claim for disparagement is that the alleged 8 disparaging publication specifically reference the plaintiff; 9 this element can be met by either direct or indirect reference. 10 E.piphany, Inc. V. St. Paul Fire & Marine Ins. Co., 590 F. Supp. 11 2d 1244, 1252-1253 (citing Blatty, 42 Cal. 3d at 1042). Microtec Research Inc. v. Nationwide Mut. A requisite 12 In this case, Defendant’s contention that there is no 13 potential for coverage under the disparagement provision of the 14 policy because the underlying complaint does not allege that 15 Plaintiff specifically references Persis is unavailing. 16 to Defendant’s assertion, the underlying complaint makes 17 sufficient allegations that could potentially establish a claim 18 for disparagement by implication. 19 Defendant to deny defense of the underlying Persis action. 20 Contrary Therefore, it was improper for E.piphany provides particularly insightful guidance. 21 E.piphany was also a duty to defend case based on a nearly 22 identical disparagement policy provision in which the underlying 23 Plaintiff alleged that E.piphany released a public statement that 24 it “offer[ed] the only full footprint CRM suite natively built on 25 a service oriented J2EE architecture.” 26 added). 27 representations have caused E.pihpany to gain, and Sigma to lose, 28 profits, market share, reputation, and goodwill.” Id. at 1249 (emphasis The underlying Plaintiff alleged that “[s]uch 15 Id. at 1250. 1 The court held that because E.piphany “falsely stated that it was 2 the ‘only’ producer of ‘all java’ and ‘fully J2EE software 3 solutions,’” the allegations in the underlying complaint 4 demonstrated “a claim for disparagement by ‘clear implication’” 5 Id. at 1253 (citing Blatty, 42 Cal. 3d at 1044 n.1). 6 Importantly, the E.piphany court relied on a similar case from 7 the Northern District of Illinois, the same district where the 8 underlying Persis action is pending, which held that a claim for 9 disparagement by implication may lie where a competitor claims 10 that is “more effective than or superior to...other drugs 11 available.” 12 Of Hartford, 152 F. Supp. 2d 1026, 1036 (N.D. Ill. 2001). See Knoll Pharmaceutical Co. v. Automobile Ins. Co. 13 Similarly to the facts underlying E.pihphany, in this case, 14 Burgett represented to Samick that it was the only holder of the 15 SOHMER trademark. 16 underlying complaint in E.pihphany, Persis alleges that Plaintiff 17 made false representations that harmed Persis “by implying to the 18 marketplace that Burgett had the superior right to use the SOHMER 19 trademark,” and thus, by implication, represented that Persis did 20 not have the rights to the SOHMER trademark. 21 Persis further alleges that Plaintiff’s “willfull statements to 22 Samick and others regarding [Plaintiff’s] use of the SOHMER 23 trademark, created a likelihood of confusion or of 24 misunderstanding as to the source, sponsorship or approval of 25 [Plaintiff’s] and/or Persis goods, as well as...confusion of or 26 misunderstanding as to affiliation, connection or association of 27 [Plaintiff] and Persis.” 28 /// In the underlying complaint, similar to the (UF ¶ 11.) 16 (UF ¶ 11.) 1 At the time of the alleged misrepresentations, Persis contends 2 that Plaintiff “was fully aware that Persis was using the SOHMER 3 trademark in commerce.” 4 concludes that these allegations, taken as a whole, create 5 potential liability and thus, potential coverage for 6 disparagement of Persis’ product —— the alleged ownership of the 7 SOHMER trademark. 8 9 (Pl.’s Compl., Ex 2 ¶ 41.) The Court While E.piphany properly supports the finding of a potential claim for disparagement by implication, the cases relied on by 10 Defendant —— Jarrow Formulas v. Steadfast Ins. Co, 2011 WL 11 1399805 (C.D. Cal. 2011); Total Call, 181 Cal. App. 4th 161. —— 12 are easily distinguishable. 13 plaintiff alleged that the party seeking defense falsely 14 advertised the benefits of their products, which, in turn, 15 deceived consumers, detrimentally affecting the reputation and 16 goodwill of the market for that product type generally and the 17 underlying plaintiffs specifically. 18 3; Total Call, 181 Cal. App. 4th at 165-166. 19 Total Call International, the [c]ourt conclude[d] that this falls 20 within the [p]olicy’s exclusion for advertising injury arising 21 out of ‘the failure of goods products or services to conform with 22 advertised quality or performance.” 23 *6. 24 allegations fall under any exclusion for false advertising. 25 generally Def.’s Opp’n.) 26 /// 27 /// 28 /// In both cases, the underlying Jarrow, 2011 WL 1399805 *2In Jarrow, “as in Jarrow, 2011 WL 1399805 at Unlike these cases, Defendant does not contend that the 17 (See 1 Indeed, in Jarrow, the court expressly distinguished 2 E.piphany by pointing out that “the underlying complaint, brought 3 by [E.piphany’s] direct competitors, alleged that the insured 4 stated that it was the only producer of a certain product, 5 resulting in damage to the competitor’s market share, sales, and 6 reputation.” 7 original). 8 Plaintiff misrepresented that it was the only owner of the SOHMER 9 trademark, “resulting in damage to [Persis’] market share, sales, Jarrow, 2011 WL 1399805 at *7 (emphasis in Similarly here, the underlying complaint alleges that 10 and reputation.” 11 finding of disparagement by implication is bolstered by the fact 12 that Persis alleges that it was the only owner of the SOHMER 13 trademark. 14 Id. Moreover, in this case, a potential Given the factual and legal similarities between this case 15 and E.piphany, and since there is established precedent upholding 16 claims for disparagement by implication in the district in which 17 that action is pending, Plaintiff is potentially liable for 18 disparagement by implication. 19 Court must resolve any question as to the duty to defend in the 20 insured’s favor, the Court finds that the underlying complaint 21 alleges sufficient facts to establish the potential for coverage, 22 and thus, the duty to defend was triggered. 23 4th at 101. 24 /// 25 /// 26 /// 27 /// 28 /// Thus, in this case, where the 18 Horace Mann, 4 Cal. 3. 1 Trademark Exclusion 2 3 Defendant argues that “[a]ll of the causes of action in the 4 Persis lawsuit either allege trademark infringement directly 5 (first cause of action) or are dependent on the trademark 6 infringement.” 7 exclusion in the Zurich policy applies to preclude coverage for 8 all the claims in the Persis lawsuit.” 9 Defendant’s position, however, ignores the relevant standard As such, Defendant contends “the trademark (Def.’s Opp’n at 14:7-9.) 10 applicable to an insurer’s duty to defend. Specifically, “Since 11 the modern procedural rules focus on the facts of the complaint 12 and extrinsic evidence, the duty to defend should be fixed by the 13 facts which the insurer learns from the complaint.” 14 65 Cal. 2d at 276. 15 action pled by the third-party complaint may fall outside policy 16 coverage does not excuse the duty to defend where, under the 17 facts alleged, reasonably inferable, or otherwise known, the 18 complaint could fairly be amended to state a covered liability.” 19 Scottsdale Ins. Co. v. MV Transp., 36 Cal. 4th 643, 654 (2005). 20 As set forth above, while the underlying complaint does not 21 explicitly state a claim for disparagement, the Court finds that 22 the complaint could be amended to state a claim for the same. 23 Thus, the trademark exclusion does not apply to bar coverage. 24 /// 25 /// 26 /// 27 /// 28 /// Gray, Thus, the fact “that the precise causes of 19 B. 1 Attorneys’ Fees and Prejudgment Interest 2 3 Plaintiff contends that it is entitled to reasonable 4 attorneys’ fees because Defendant has breached its duty to defend 5 the underlying Persis action. 6 it is entitled to prejudgment interest. 7 contest that Plaintiff is entitled to reasonable attorneys’ fees 8 if the Court finds that it breached its duty to defend. 9 Defendant does assert that Plaintiff is not entitled to Moreover, Plaintiff contends that Defendant does not However, 10 prejudgment interest because the amount of damages is in dispute 11 and has not been established. 12 Under California law, where an insurer wrongfully “refuse[s] 13 to defend an action against its insured...the insurer is liable 14 for the total amount of the fees” unless the insurer produces 15 undeniable evidence that it is not liable for all of the 16 attorney’s fees.” 17 553, 564 (1970). 18 potentially covered by the insurance contract, the insurer 19 breaches its duty to defend by refusing to defend its insured. 20 Id. (citing Gray v. Zurich Ins. Co., 65 Cal. 2d 263). 21 Furthermore, “[a] liability insurer’s breach of the duty to 22 defend results in the insurer’s forfeiture of the right to 23 control defense of the action or settlement, including the 24 ability to take advantage of the protections and limitations set 25 forth in the statute governing liability insurers’ duty to 26 provide independent counsel.” 27 183 Cal. App. 4th 16 (2010). 28 /// Hogan v. Midland Nat’l Ins. Co., 3 Cal. 3d When the underlying complaint states an injury Intergulf Devel. v. Super. Ct., 20 1 California Civil Code § 3287 provides that “[e]very person 2 who is entitled to recover damages certain, or capable of being 3 made certain by calculation, and the right to recover which is 4 vested in him upon a particular day, is entitled also to recover 5 interest thereon from that day....” 6 “the court has no discretion, but must award prejudgment interest 7 upon request, from the first day there exists both a breach and a 8 liquidated claim.” 9 App. 4th 498, 535 (2010) (quoting N. Oakland Med. Clinic v. Under this code section, Howard v. Am. Nat. Fire Ins. Co., 187 Cal. 10 Rogers, 65 Cal. App. 4th 824, 828 (1998)). Courts generally 11 apply a liberal construction in determining whether a claim is 12 certain or liquidated. 13 Togova Enter., Inc., 149 Cal. App. 3d 901, 907 (1983)). 14 for determining certainty under section 3287(a) is whether the 15 defendant knew the amount of damages owed to the claimant or 16 could have computed that amount from reasonably available 17 information. Id. (citing Chesapeake Indus., Inc., 149 Cal. App. 18 3d at 907)). Uncertainty as to the defendant’s liability is 19 irrelevant to the determination. 20 Comp. Appeals Bd., 76 Cal. App. 4th 513, 517 (1999). 21 certainty required by section 3287(a) is not lost when the 22 existence of liability turns on disputed facts but only when the 23 amount of damages turns on disputed facts.” Howard, 187 Cal. App. 24 4th at 536 (citing Olson v. Cory, 35 Cal. 3d 390, 402 (1983)). 25 /// 26 /// 27 /// 28 /// Id. (citing Chesapeake Indus., Inc. v. 21 The test Boehm & Assocs. v. Workers’ “The 1 Under California law, Plaintiff is entitled to reasonable 2 attorneys’ fees as Defendant has breached its duty to defend by 3 failing to provide Plaintiff with a defense in the Persis action, 4 which states an injury potentially covered by the insurance 5 contract. 6 would allow the Court to calculate the proper amount of fees it 7 should award. 8 entitled to reasonable attorneys’ fees, but the amount of 9 attorneys’ fees that Plaintiff is entitled to remains a question However, neither party has submitted any evidence that Accordingly, the Court finds that Plaintiff is 10 of fact. 11 from the parties as to the amount of attorneys’ fees to which 12 Plaintiff is entitled 13 To this end, the Court requests additional briefing It is entirely unclear at this point whether Defendant knows 14 or is capable of computing the amount of damages that are 15 potentially owed to Plaintiff. 16 is reasonably available information about the amount of damages 17 potentially owed to Plaintiff. 18 the amount of damages will be disputed between the parties. 19 Thus, it is not appropriate for the Court to order prejudgment 20 interest at this time. It is also unclear whether there Furthermore, it is likely that 21 CONCLUSION 22 23 24 25 26 For the foregoing reasons, Defendant’s motion for summary judgment is GRANTED. Specifically: 1. Plaintiff’s motion for summary judgment as to 27 Defendant’s duty to defend the underlying Persis action is 28 GRANTED. 22 1 2. Plaintiff is awarded reasonable attorneys’ fees for 2 breach of its duty to defend the underlying Persis action. 3 However, the Court requires additional briefing as to the amount 4 of attorneys’ fees to which Plaintiff is claiming. Such 5 additional briefing from Plaintiff is to be filed not later than 6 forty-five (45) days after this electronic order is filed. 7 8 9 10 3. The Court orders that Plaintiff is not entitled to prejudgment interest. IT IS SO ORDERED. Dated: November 22, 2011 11 12 13 _____________________________ MORRISON C. ENGLAND, JR. UNITED STATES DISTRICT JUDGE 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 23

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?