Contents


    Executive Summary

    The term “intellectual property” (IP) refers to creations of the mind, including names and images used in business transactions, inventions, artistic and literary works, designs and symbols. IP law protects the creations, enabling people to gain financially from them.

    Intellectual property disputes are expensive in terms of damage for monetary losses, harm to reputation and impact on future profits. Regulations are complex and administered by several different governmental agencies. IP cases often generate coverage disputes over contract terms as insureds may seek to expand coverage, and those conflicts result in litigation. New technologies are likely to escalate IP disagreements, often with insurers playing a key role in resolution.

    Background

    Patents, trademarks, industrial designs, geographical indications and copyright fall under the protection of IP law. A patent is an exclusive right granted for an invention, intended to protect the owner’s right to determine how the invention can be used by others, while the patent holder is expected to reveal technical information about the invention in the public patent document. A “trademark” is a sign intended to distinguish the products or services of one business from those of other enterprises. “Copyright” describes the rights that creators have over their literary and artistic works, including books, music, artworks, movies, computer programs, databases, advertisements, technical drawings and maps. IP also applies to the industrial design of an article, including the item’s shape or surface, patterns, lines, color and more. “Geographical indications,” is also a protected category; they are the identifying signs used on goods that come from a specific place and have a certain quality, reputation or characteristic that is essentially attributable to that geographical place of origin.

    Injuries and Damages

    Intellectual property disputes are costly, affecting revenues and profits. Infringement violations involving copyrights, patents or trademarks are at the center of many intellectual property disputes. Infringement violations that result in injury can occur in many ways: by the unauthorized copying and sales of music, films, or other media; by putting a logo belonging to a certain product on a like product; by using trade dress to convince consumers that they are purchasing a product that is identical to the original product when it is not; or, by creating an item that replicates a patented item without permission from the patent’s owner. Damages can result from corporate espionage in the form of a company employee being successfully bribed to sell a secret client list to a competitor. Also, a manufacturer may be injured in any number of ways if the company takes action based on the mistaken belief that the item is protected under IP laws when it is not.

    Legislation and Regulation

    A number of federal agencies are involved in intellectual property regulation. The U.S. Patent and Trademark Office (USPTO) grants patents and registers trademarks. Working through the Office of the Administrator for External Affairs, the USPTO also provides advice to governmental agencies on IP policies, addressing enforcement and protections, and securing IP provisions in free trade agreements.

    The U.S. Department of Justice maintains the Task Force on Intellectual Property with the goal of confronting domestic and international property crimes.

    The Office of the U.S. Trade Representative, through its Office of Intellectual Property and Innovation, states that it uses a wide range of tools to insure the enforcement of strong intellectual property laws worldwide, reinforcing the importance of intellectual property to the U.S. economy.

    Liability and Insurance

    Specialty IP insurance is available but not consistently purchased. A company is more likely to seek insurance coverage under the Advertising Injury clause of their Comprehensive General Liability (CGL) policy only after an IP suit is filed against that company.

    Coverage under a standard CGL policy form is generally found for traditional IP claims, including copyright, patent and trademark claims which involve the infringement or misappropriation of an advertisement, the technology behind the advertising, or the idea itself. Advertising injury coverage is generally intended to include injuries arising out of specific offenses, including the oral or written publication of slanderous or libelous materials, material that disparages a person’s products or services or that violates a person’s right to privacy. Advertising injury also includes the unauthorized use of another’s advertising idea or copyright, trade dress or slogan.

    Some courts have found coverage for trade secret claims related to marketing plans and client lists. Claims that frequently accompany patent, copyright, trademark and trade secret claims -- such as defamation and libel -- are often covered, resulting in the CGL insurer providing a defense against all the IP-related claims in a dispute.

    Insurers may seek to deny coverage for IP claims for several reasons, such as the offensive act having arisen out of an action that was performed at the insured’s direction or with knowledge of falsity, was a willful act, constituted a breach of contract, was a failure of goods to conform with statement of performance, or amounted to a wrong description of a product.


    Litigation

    The scope of coverage for IP claims provided by CGL policies is frequently litigated. Two 2017 federal appellate court rulings broadly construed CGL policy language, finding that the insurers were obligated to defend their policyholders on the basis that the complaints potentially covered advertising injuries within the policy terms. Several older cases involving insurance coverage of IP claims are also of interest.

    2017: Uretek (USA), Inc. v. Cont'l Cas. Co.
    In Uretek (USA), Inc. v. Cont'l Cas. Co., 701 Fed. Appx. 343 (5th Cir. July 28, 2017), the insured sued a competitor for alleged patent infringements and the competitor counterclaimed. The Court found that the insured was entitled to a defense from its CGL insurer in connection with the counterclaim. The Court stated that the injuries asserted in the counterclaim arose out of “disparagement;” accordingly, the counterclaim fell within the scope of policy coverage for suits alleging “personal and advertising injury arising out of” several offenses, including the publication of material that “disparages a person's or organization's goods, products or services.” Additionally, the Court found that because the complaint alleged both intentional and negligent conduct, no policy exclusions applied.

    2017: Crum & Forster Specialty Insurance Company v. Willowood USA, LLC
    In Crum & Forster Specialty Insurance Company v. Willowood USA, LLC, 696 Fed. Appx. 276 (9th Cir. Aug. 17, 2017), the underlying suit involved the trademark of a distributor of agricultural pesticides, Repar Corporation, and the alleged unauthorized use of that trademark by Willowood USA, LLC. After the claims were settled, Willowood sought coverage for its defense and settlement costs under three CGL policies that covered advertising injury “arising out of … [t]he use of another's advertising idea in your ‘advertisement.’” The resulting trial court decision was appealed to the U.S. Court of Appeals for the Ninth Circuit, which found that the trial court had adopted an unduly narrow construction of the phrase “arising out of” in holding that the harm Repar suffered was caused by Willowood’s alleged misuse of the trademarked name, not by actual advertising. The appellate court, however, gave the “arising out of” policy term a broad interpretation, holding that Repar’s complaint specifically alleged injury from Willowood’s unauthorized use of Repar’s idea to include the name of Repar’s tebuconazole product -- “TEBUCON” -- in the advertising. The appellate court found that the complaint’s allegations were enough to put the insurers on notice of the possibility of a covered liability or advertising injury that would trigger a duty to defend. The Ninth Circuit remanded the case to resolve the question of the insurer’s indemnity obligations for settlement costs because there was an issue of fact as to whether the settlement had been made for a claim that was covered.

    2009: General Cas. Co. v. Wozniak Travel, Inc.
    In General Cas. Co. v. Wozniak Travel, Inc., 762 N.W.2d 572 (Minn. Sup. Ct. 2009), the issue was whether “trademark infringement” claims could be covered under the “advertising injury” clause of the CGL policy as “infringement of title.” The insured travel agency had used the trademarked term “Hobbit” in its business in connection with its agency name and special travel offers. The travel agency was sued by the owner of several trademarks relating to the term “Hobbit” as used in the well-known novels. The court found that the alleged trademark infringement fell within the plain meaning of “infringement of title” and thus, was covered under the CGL policy as “advertising injury.”

    2008: Australia Unlimited, Inc. v. Hartford Casualty Insurance Co.
    In Australia Unlimited, Inc. v. Hartford Casualty Insurance Co., 198 P.3d 514 (Wash. Ct. App. 2008), the parties disputed whether a CGL policy provided coverage for trade dress as “advertising injury.” The defendant-insured sold a particular type of shoes through its website. A competitor shoe manufacturer made general allegations of trade dress infringement against the defendant, and specifically included in its trade dress description its “‘marketing and sales materials’ that ‘share an overall unique look and feel’ that served to identify [the competitor’s shoes] as the origin.” It was noted that “trade dress” is a technical term that refers to the total image of a product and might include particulars such as texture, graphics, colors, product shape or even specific sales processes. The court, in ruling that coverage was potentially available under the CGL policy, observed that “[w]hile the classic trade dress infringement action involves the packaging or labeling of goods, it may extend to marketing techniques and can include certain sales techniques designed to make the product readily identifiable to consumers and unique in the marketplace."

    Future Outlook

    New advertising technologies, claims for electronic invasions of privacy based on security breaches, and rulings which allow coverage for certain IP claims under CGL policies may bring the issues surrounding insurance for intellectual property claims to the forefront. Trends in judicial interpretations of possibly applicable clauses and exclusions to IP coverage in CGL policies will have to be considered as companies weigh the value of specialty coverage for IP claims.

    In the News

    2023

    • Supreme Court Rules Against Andy Warhol in Copyright Case - Adam Liptak, The New York Times (05/18/2023)
      The Supreme Court ruled on Thursday that Andy Warhol was not entitled to draw on a prominent photographer’s portrait of Prince for an image of the musician that his estate licensed to a magazine, limiting the scope of the fair-use defense to copyright infringement in the realm of visual art.

    2019

    • Pirate ship lawsuit from Fayetteville goes to Supreme Court on Tuesday - Paul Woolverton, The Fayetteville Observer (11/02/2019)
      Fayetteville videographer Rick Allen says the state of North Carolina is liable for violating his copyright on his videos. The state disagrees.

      A lawsuit from Fayetteville about Blackbeard’s pirate ship will go before the U.S. Supreme Court on Tuesday, and the outcome is expected to have far-reaching implications for numerous businesses and individuals who make money from creating and selling copyrighted works, such as songs, books, pictures, videos and computer software.
    • Blue Mail App Developer Sues Apple For Patent Infringement And Antitrust Violation - Ted Ranosa, Tech Times (10/07/2019)
      The developer of the email management app Blue Mail is suing Apple for allegedly infringing on its patent and violating antitrust laws.
    • EagleView Wins $125M Patent Infringement Award, Sales Halt Against Verisk - Andrew G. Simpson, Insurance Journal (09/30/2019)
      A New Jersey jury last week ordered insurance data services firm Verisk to pay $125 million to aerial imaging firm EagleView for lost profits linked to Verisk infringing on various EagleView patents.

    2017

    • CGL Insurance Coverage for Advertising Injuries: Upping the Ante for IP Litigation - Jones Day (08/01/2017)

      In a pair of recent decisions, the Fifth and Ninth Circuits issued separate policyholder-friendly opinions broadly construing the language of commercial general liability ("CGL") insurance policies in connection with intellectual property litigation. Reversing federal district court rulings granting summary judgment for the insurers, both opinions found that the insurers had a duty to defend their policyholders, because the complaints alleged potentially covered advertising injuries within the terms of the CGL policies. . . . These rulings are welcome news for commercial policyholders facing intellectual property claims, as they indicate courts' growing trend of interpreting CGL policies to cover the defense and indemnification of advertising injury claims related to IP litigation. 

    • Hormel Foods sues Purina over 'Black Label' use in dog treats - Kristen Leigh Painter, Minnesota Star Tribune (05/30/2017)
      Hormel Foods Corp. is suing Nestlé Purina PetCare Co. for using the “Black Label” mark on its Beggin’ Strips line of dog treats.
    • Khloe Kardashian Sued for Posting a Photo of Khloe Kardashian on Instagram - Eriq Gardner, The Hollywood Reporter (04/26/2017)
      Of all the creative industries — films, television, music, books, etc. — our money is on photography as being the most copyright aggressive these days.
    • Biogen settles a patent issue for $1.25b - Robert Weisman, Boston Globe (01/17/2017)
      Biogen Inc. has settled part of an ongoing patent dispute with Forward Pharma A/S, agreeing to pay the Danish biotech company $1.25 billion in license intellectual property covering an important ingredient in Biogen’s top-selling multiple sclerosis drug.

    2015

    • Youtube ‘Dancing Baby’ Case Prompts Fair Use Ruling on Copyrighted Videos - Sam Thielman, The Guardian (09/15/2015)
      It just became a little harder to force someone to take copyrighted videos off Youtube, after a ruling from a three-judge panel in California found that before filing a removal notice, copyright holders must consider whether the way their intellectual property is used could be considered “fair use” under US law.

    2014

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