International Chemical Corporation et al v. Nautilus Insurance Company

Filing 45

DECISION AND ORDER GRANTING Defendant's 17 Motion for Summary Judgment; DENYING Plaintiffs' 8 Motion for Summary Judgment; DIRECTING the Clerk of the Court to close this case. Signed by William M. Skretny, Chief Judge on 12/30/2011. (MEAL)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
INTERNATIONAL CHEMICAL CORPORATION
d/ba/ INNOVATIVE CHEMICAL CORPORATION,
JAMES TIMLIN, and WOODRIDGE SPECIALTY
PRODUCTS CORP.,
Plaintiffs,
v.

DECISION AND ORDER
09-CV-359S

NAUTILUS INSURANCE COMPANY,
Defendant.

I. INTRODUCTION
Plaintiffs, International Chemical Corp. d/b/a Innovative Chemical Corp. (“ICC”),
James Timlin, and Woodridge Speciality Products Corp. (“Woodridge”), commenced this
suit in New York State Supreme Court, County of Erie on March 11, 2009. (Docket No. 1.)1
Defendant, Nautilus Insurance Co. (“Nautilus”), with whom ICC had contracted to provide
“litigation insurance,” removed the action to this Court on April 16, 2009 on diversity
grounds. ICC seeks a declaration that Nautilus was required to furnish them a defense,
which it refused to do, in an underlying action in the United States District Court for the
Northern District of Illinois.2 Each party presently seeks summary judgment as to their
1

Although this action technically consists of three plaintiffs, all parties are associated with ICC. Jam es
Tim lin was the owner/chief executive officer of ICC. W oodridge was alleged to have had the sam e ownership
and m anagem ent as ICC. Further, it was alleged that they engaged in the sam e activities as ICC. Therefore,
all the plaintiffs will be treated collectively as “ICC.” See Medallion Prods., Inc. v. McAlister, No. 6 C 2597,
2008 W L 5046055 (N.D. Ill. Nov. 20, 2008).
2

Plaintiffs brought this action on March 11, 2009, alm ost four m onths after they had been awarded
sum m ary judgm ent in the underlying case on Novem ber 20, 2008. However, in their Com plaint they state that
the underlying action has not yet been resolved. (Com plaint, ¶ 28; Docket No. 1-2.) Both parties’ subm issions
treat the underling case as current and on-going even though it appears that it was then and is now closed.
See Medallion Prods., 2008 W L 5046055 at *20 (granting sum m ary judgm ent to ICC and Tim lin on all counts
where W oodridge had already been dropped from the case). Despite this apparent discrepancy and the
confusion generated from it, this Court will adjudicate the m erits of Plaintiff’s claim because the outcom e of
the underlying case does not affect the m erits of Plaintiff’s claim here.

rights and obligations under the insurance contract. (Docket Nos. 8, 17.)
II. BACKGROUND
A.

Underlying Case
The facts of this case correspond to the facts of the underlying action, Medallion

Products, Inc. v. McAlister, No. 6 C 2597, 2008 WL 5046055 (N.D. Ill. Nov. 20, 2008), in
which Plaintiffs in this action were defendants. Because the facts and allegations of the
complaint in that case determine Nautilus’ duty to furnish a defense, those allegations will
be recited below in abbreviated form.
Medallion Products Inc. (“Medallion”) is a business that designs and markets
consumer products through televison infomercials. (Medallion Products, Inc. v. McAlister
Fourth Amended Complaint, ¶ 5; docketed in this case at number 8-7.)3 Sometime in 2004
at the request of William McAlister, Medallion created a urine removal product aimed at
eliminating pet stains and odors. (Id. ¶ 22.) The product is allegedly a proprietary
formulation that contains a chemical which, with the help of a blacklight, allows viewers to
see it remove stains. (Id. ¶ 24.) McAlister and Medallion eventually entered into a contract
whereby Medallion would serve as the sole manufacturer and McAlister as sole distributor
of the product. (Id. ¶¶ 33-36.) Thereafter, they worked together to develop a television
infomercial praising the effectiveness of the product and demonstrating its capabilities. (Id.

3
The first am ended com plaint in the underlying action was filed on May 11, 2006 and alleged a cause
of action against ICC for civil conspiracy. (Godson Affidavit, Exhibit A, ¶¶ 115-123; Docket No. 8.) The second
am ended com plaint was filed on June 30, 2006 and contained causes of action against ICC for
m isappropriation of proprietary im ages and conspiracy.(Godson Affidavit, Exhibit B, ¶¶ 114-119.) The third
am ended com plaint was filed on April 10, 2007 and nam ed ICC and W oodridge as defendants. (Godson
Affidavit, Exhibit C.) The fourth am ended com plaint was filed on March 27, 2008. (Godson Affidavit, Exhibit
D.) It nam ed ICC as a defendant but dropped W oodridge. (Id.) In reciting the facts, this Court will rely on the
fourth am ended com plaint because it undisputedly contained the m ost detailed factual allegations and the
m ost causes of action.

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¶¶ 33, 43-50.) Medallion also played a role in developing the labeling for the new product.
(Id. ¶ 42(b).)
Despite Medallion honoring its end of the agreement, McAlister eventually breached
the agreement by conspiring with ICC to create a “knock-off” of the Medallion product. (Id.
¶¶ 69, 71.) McAlister provided ICC with a copy of a laboratory report that identified
Medallion as the manufacturer of the product, a bottle of the product with labeling, samples
of the Medallion solution, and access to the television commercial. (Id. ¶¶ 71-72.) At all
times, ICC allegedly knew that McAlister had another supplier but still agreed to develop
a similar product. (Id. ¶ 74.)
On June 7, 2005, ICC represented to McAlister that it had reverse engineered the
Medallion formulation and that its product was even better than the original. (Id. ¶ 75.) But,
in fact, according to Medallion the ICC product contained no special enzyme found in
Medallion’s product and, unlike the original, it did not make the urine glow under blacklight.
(Id. ¶ 95.)
Later, using a template provided by McAlister, ICC created a new label and added
the “AS SEEN ON TV” emblem. (Id. ¶ 77) Further, ICC approved a label listing ingredients
that it knew its product did not contain. (Id. ¶¶ 78, 80.) In sum, according to Medallion, ICC
created a deficient knock-off product and falsely represented to McAlister that it could act
as a substitute for the Medallion product. (Id. ¶¶ 97-98.) Medallion alleges that this
substitute ICC product was eventually sold fraudulently in place of its product. (Id. ¶¶ 107,
120.)
B.

Insurance Agreement
Relevant to this action is a portion of ICC’s insurance policy that provides coverage
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for “personal and advertising injury.” It reads in part:
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. 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.
(Insurance Policy4; Docket No. 1-3.)
It defines personal and adverting injury as “the use of another’s advertising idea in
your ‘advertisement’; or [i]nfringing upon another’s copyright, trade dress, or slogan in your
advertisement.” (Id.) Trade dress is defined as “the total appearance and image of a
product, including features such as size, texture, shape, color or color combinations,
graphics and particular advertising and/or marketing techniques used to promote its sale.”
(Id.)
It further defines advertisement as “a notice that is broadcast or published to the
general public or specific market segments about your goods, products or services for the
purpose of attracting customers or supporters.” (Id.)
The policy excludes acts “[c]aused by or at the direction of the insured with the
knowledge that the act would violate the rights of another and would inflict ‘personal and
advertising injury.’” (Id.)
III. DISCUSSION
A.

Summary Judgment Standard
Rule 56 of the Federal Rules of Civil Procedure provides that “[t]he court shall grant

4

The policy is not paginated.

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summary judgment if the movant shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of law.” A fact is “material” only if
it “might affect the outcome of the suit under governing law.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 2510, 91 L. Ed. 2d 202 (1986). A “genuine”
dispute exists “if the evidence is such that a reasonable jury could return a verdict for the
non-moving party.” Id. In determining whether a genuine dispute regarding a material fact
exists, the evidence and the inferences drawn from the evidence “must be viewed in the
light most favorable to the party opposing the motion.” Adickes v. S. H. Kress & Co., 398
U.S. 144, 158–59, 90 S. Ct.1598, 1609, 26 L. Ed. 2d 142 (1970) (internal quotations and
citation omitted).
“Only when reasonable minds could not differ as to the import of evidence is
summary judgment proper.” Bryant v. Maffucci, 923 F.2d 979, 982 (2d Cir. 1991) (citation
omitted). Indeed, “[i]f, as to the issue on which summary judgment is sought, there is any
evidence in the record from which a reasonable inference could be drawn in favor of the
opposing party, summary judgment is improper.” Sec. Ins. Co. of Hartford v. Old Dominion
Freight Line, Inc., 391 F.3d 77, 82-83 (2d Cir. 2004) (citations omitted). The function of the
court is not “to weigh the evidence and determine the truth of the matter but to determine
whether there is a genuine issue for trial.” Anderson, 477 U.S. at 249.
When the parties cross-move for summary judgment, “the standard is the same as
that for individual motions for summary judgment.” Natural Res. Def. Council v. Evans, 254
F. Supp. 2d 434, 438 (S.D.N.Y. 2003). “The court must consider each motion
independently of the other and, when evaluating each, the court must consider the facts
in the light most favorable to the non-moving party.” Id. (citing Morales v. Quintel Entm't,
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Inc., 249 F.3d 115, 121 (2d Cir. 2001)).
Summary judgment in favor of an insurer is appropriate when the allegations raised
in a complaint for which coverage is sought fall entirely within a policy exclusion. Brooklyn
Law Sch. v. Aetna Cas. And Sur. Co., 849 F.2d 788, 789 (2d. Cir. 1988).
B.

Choice of Law5
Although neither party has briefed this issue and they both cite substantive caselaw

from courts throughout the country, choice-of-law is the first issue a federal court must
address in a diversity case. A federal court applies the choice-of-law rules of the state in
which it sits to determine which law to apply to the case. Klaxon v. Stentor Electric Mfg.
Co., 313 U.S. 487, 61 S. Ct. 1020, 85 L. Ed. 1477 (1941). In New York, “the law of the
jurisdiction having the most significant contacts and the greatest interest in the litigation will
be applied.” R.E. Turner, Inc. v. Conn. Indem. Co., 925 F. Supp. 139, 144 (W.D.N.Y.1996).
In cases involving insurance contracts, New York courts "traditionally resolved choice of
law issues . . . by applying the law of the state which the parties understood would be the
principal location of the risk." Snyder v. Nat’l Union Fire Ins. Co., 688 F. Supp. 932, 934-35
(S.D.N.Y.1988); see also Cunninghame v. Equitable Life Assur. Soc. of U.S., 652 F.2d
306, 308 (2d Cir. 1981) ("If . . . the contract does not have a choice-of-law provision, then
the principal location of the insured risk is given particular emphasis in determining the
choice of the applicable law.”). Therefore, because the insured party resides in New York
and because this Court lacks any further information, New York law should be applied to
this action. No other state has any apparent interest in the litigation beyond the fact that

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Neither party brings a choice-of-law provision in the contract to this Court’s attention.

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one of the parties is a citizen of that state. In such a situation, New York, the forum state,
has the most significant contacts and greatest interest in this litigation. See Andy Warhol
Found. for Visual Arts, Inc. v. Fed. Ins. Co., 189 F .3d 208, 214 (2d Cir.1999); Morgan
Stanley Group, Inc. v. New England Ins. Co., 36 F. Supp. 2d 605, 606 (S.D.N.Y.1999).
C.

Duty to Defend
The duty to defend insureds – long recognized as broader than that to indemnify –

is derived from the allegations of the complaint and the terms of the policy. See Technicon
Elec. Corp. v. Am. Home Assur. Co., 74 N.Y.2d 66, 73, 542 N.E.2d 1048, 544 N.Y.S.2d
531 (1989). If the complaint contains any facts or allegations which bring the claim even
potentially within the protection purchased, the insurer is obligated to defend. Ruder & Finn
v. Seaboard Sur. Co., 52 N.Y.2d 663, 669–70, 439 N.Y.S.2d 858, 422 N.E.2d 518 (1981).
When an exclusion clause is relied upon to deny coverage, the insurer has the burden of
demonstrating that the “allegations of the complaint cast that pleading solely and entirely
within the policy exclusions, and, further, that the allegations, in toto, are subject to no
other interpretation.” Int’l Paper Co. v. Cont’l Cas. Co., 35 N.Y.2d 322, 325, 361 N.Y.S.2d
873, 320 N.E.2d 619 (1974); Technicon Elec. Corp., 74 N.Y.2d at 73. Further, the
language in the exclusion clause must be “clear and unmistakable.” Seaboard Sur. Co. v
Gillette Co., 64 N.Y.2d 304, 311, 486 N.Y.S.2d 873, 476 N.E.2d 272 (1984).
Policyholders are entitled to be defended even if the underlying action is frivolous
or rests on debatable theories. Int’l Paper Co., 35 N.Y.2d at 326-27. However, it is the facts
of the case, not conclusory allegations, that the court looks to in making its decision. Nat.
Union Fire Ins. Co. of Pittsburgh, Pa. v. AARPO, Inc., No. 97 Civ. 1438(JSM), 1999 WL
14010, at *3 (S.D.N.Y. Jan. 14, 1999); Allstate Ins. Co. v. Mugavero, 79 N.Y.2d 153, 162,
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581 N.Y.S.2d 142, 589 N.E.2d 365 (1992); Pa. Millers Mut. Ins. Co. v. Rigo, 256 A.D.2d
769, 770-71, 681 N.Y.S.2d 414 (N.Y. App. Div. 1998); Willard v. Preferred Mut. Ins. Co.,
242 A.D.2d 960, 961, 662 N.Y.S.2d 342, 343 (N.Y. App. Div. 1997) (“In determining
whether a policy exclusion applies, the facts alleged in the complaint, rather than the
conclusory assertions found therein, are controlling.”).
D.

Motions for Summary Judgment
ICC argues that it was sued in the underlying action for inflicting advertising injury

on Medallion. Specifically, it claims that since the alleged fraudulent product, which it
manufactured, was sold in the marketplace under Medallion’s “trade dress” and advertised
in an infomercial, it is being accused of “advertising injury.” It moves this Court for a
declaration that Nautilus owed them a defense in that action pursuant to their contract.
Nautilus argues, inter alia, that it had no duty to provide coverage because
Medallion’s complaint in the underlying action alleges only that ICC engaged in intentional
conduct, which is excluded under the policy.
This Court agrees. Having undertaken a independent study of each of the four
relevant complaints in that action6, it becomes evident that Medallion sought to hold ICC
liable exclusively for intentional conduct. Medallion alleges that McAlister provided ICC with
Medallion’s product and labeling and asked it to create a knock-off product. It alleges that
ICC “knew at the time that [McAlister] had another supplier who was making the product”
and that “despite that knowledge ICC agreed to develop a product for sale to [McAlister]
. . . to be sold at retail.” (Fourth Amended Complaint, ¶¶ 73, 74.) It further alleges that “all

6
There are actually 8 com plaints in total, seven am ended and one original. However, only four
im plicate ICC.

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defendants participated in or ratified the crucial decision to include on both the retail label
and packaging the banner headline ‘AS SEEN ON TV,’” which Medallion alleges caused
confusion with its own product in the marketplace. (Id. ¶ 84.) It adds that all Defendants
“knew it was false.” (Id. 85.) In short, every allegation against ICC accuses it of knowing
and intentional conduct. By the “clear and unmistakable” terms of the policy, such action
is excluded from coverage: “This insurance does not apply to . . . advertising injury caused
by or at the direction of the insured with the knowledge that the act would violate the rights
of another and would inflict “personal and advertising injury.” (Id.) Thus, Nautilus had no
duty to defend. See Seaboard Surety Co. v. Gillette Co., 64 N.Y.2d 304, 311, 486 N.Y.S.2d
873, 476 N.E.2d 272 (1984) (duty to defend absent when the allegations are “solely and
entirely within the policy exclusions”).
Plaintiffs argue that this provision does not apply because there are causes of action
that could be sustained against them that do not require intentional conduct. But this
argument fails for two reasons. First, this Court must look to the facts alleged, not the
causes of action brought. See National Union Fire Ins. Co., 1999 WL 14010 at *3 (“Based
upon the facts alleged in the complaint, the [insurance] policy does not cover the conduct
alleged against the . . . plaintiffs.”) Here, as already noted, all the facts accuse ICC of
intentional conduct. In fact, each of the causes of action alleged against ICC in the fourth
amended complaint – tortious interference with contract, tortious interference with
prospective economic advantage, and conspiracy – require intentional conduct.
Second, while an insured is required to provide a defense if there is any reasonable
probability that the facts alleged could support a covered claim, see Cont'l Cas. Co., v.
Rapid-Am. Corp., 80 N.Y.2d 640, 649, 593 N.Y.S.2d 966, 609 N.E.2d 966 (1993), no such
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reasonable probability exists on the face of this complaint. Instead, it unequivocally
accuses ICC of intentional and knowing conduct. ICC’s argument that a hypothetical cause
of action could be brought, alleging a violation of New York General Business Law, does
not change this analysis – this Court must look only to the “the four corners of the
complaint,” which clearly do not suggest a “reasonable possibility of coverage.” See id.; see
also Brooklyn Law Sch., 849 F.2d at 790 (“We can see no reason why the court should
have imagined what is not in the complaint in order to find liability which was not
intended.”) Consequently, Defendant’s motion is granted and Plaintiffs’ motion is denied.7
IV. CONCLUSION
For the reasons discussed above, Defendant’s motion for summary judgment,
seeking a declaration that it was not required to defend Plaintiffs in the underlying action,
is granted. For the same reasons, Plaintiffs’ motion is denied.
V. ORDERS
IT HEREBY IS ORDERED, that Defendant’s Motion for Summary Judgment (Docket
No. 17) is GRANTED.

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This Court relies on the exclusion clause because it clearly absolves Nautilus of any duty to defend.
That is not to im ply, however, that Nautilus would have a duty otherwise. For exam ple, the coverage only
applies to the insured’s advertisem ent, but the underlying com plaint does not allege that ICC played any role
in any advertisem ent. ICC was sim ply the supplier of a product, it did not “publish[] or broadcast to the general
public.” ICC cites no binding caselaw in support of its contention that its m islabeling or fraudulent labeling
could be considered an advertisem ent. Instead it relies on an abrogated case from Michigan, a case from the
Southern District of Florida where the com plaint specifically alleged that the insured conducted advertising,
and a New York case that does not even consider insurance coverage. See Citizens Ins. Co. v. Pro-Seal, 710
N.W .2d 547 (Mich. App. 2005); Adolfo House Distrib. Corp. v. Travelers Property & Cas. Ins. Co.,165 F. Supp.
2d 1332 (S.D. Fla. 2001); Maritim e Fish Prods, Inc., W orld-W ide Fish Prods. Inc., 100 A.D.2d 81, 474
N.Y.S.2d 281 (N.Y. App. Div. 1984). W hile it does cite Seaboard Surety Co. v Gillette Co., 64 N.Y.2d 304 for
the proposition that a m anufacturer can be held liable for an advertising agency’s television com m ercial, the
insurance provision in that contract provided coverage for “any invasion of rights of privacy com m itted or
alleged to have been com m itted in any advertisem ent.” Id. at 309. This is unlike the provision at issue here,
which provides coverage only for “your advertisem ent,” not “any advertisem ent.” Moreover, the advertising
agency and the insured were in privity by operation of a contract where the agency would develop
com m ercials on behalf of the insured. No such relationship exits here.

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FURTHER, that Plaintiffs’ Motion for Summary Judgment (Docket No. 8) is DENIED.
FURTHER, that the Clerk of the Court is directed to close this case.

Dated:

December 30, 2011
Buffalo, New York

/s/William M. Skretny
WILLIAM M. SKRETNY
Chief Judge
United States District Court

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