Despite IP exclusion, insurer bound to defend in right-of-publicity case over running shoes, Mass. high court holds

Upon an underlying case involving the right of publicity coupled with consumer protection and equity claims, the Massachusetts Supreme Judicial Court (SJC) today held insurers duty-bound to defend an insured running-shoe maker, despite the exclusion of intellectual property claims from coverage.

Abebe Bikila in Rome, 1960

Massachusetts-based Vibram USA, through its affiliate Vibram FiveFingers, named a line of "minimalist" running shoes after Ethiopian Olympic athlete Abebe Bikila, who ran barefoot when he set a marathon world record in Rome in 1960.  (See clips from 1960 and Bikila's 1964 marathon win in Tokyo on the Olympic Channel).  Seriously injured in a car accident in 1969, Bikila died of a cerebral hemorrhage in 1973.  Since then, the family has made commercial use of the Bikila name in enterprises including a Spanish retail sporting goods chain, a Bikila biography, a Japanese commercial, and a biographical feature film.  The family objected to Vibram's association of its shoe with Bikila without permission.

The complaint comprised four counts: (1) right of publicity under the Washington Personality Rights Act, (2) violation of the Washington Consumer Protection Act, (3) unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), and (4) unjust enrichment.  Vibram's general insurance and liability policies with two providers, Salem-based Holyoke Mutual and Maryland Casualty, covered "personal and advertising injury liability," without defining "advertising injury"; however, the coverage excluded intellectual property liability.  The insurers sought, and the superior court granted, declaratory relief from coverage.  The SJC reversed.

To trigger an insurer's duty to defend, the insured need show only "a possibility that the liability claim falls within the insurance coverage."  The duty to defend is broader than the duty to indemnify.  The Bikila complaint alleged that Vibram used Bikila as "an advertising idea."  Bikila family members alleged that they had "intentionally and specifically connected the name to running-related ventures, and the name itself conveys a 'barefoot dedication to succeed under any circumstances,' a desirable quality for any of these ventures."  The insurers were mistaken in arguing that the claim was limited to the right of publicity, or was synonymous with trademark infringement, both IP theories excluded from coverage.  Rather, the essence of the Bikila claim was that Vibram sought to profit from Bikila-associated ideas.

Vibram FiveFingers Bikila Running Shoes (by Fuzzy Gerdes, CC BY 2.0)

From the court's opinion, it is not clear to me which or what combination of claims ensures that a complaint such as this one rises beyond the coverage exclusion.  Count 1 right of publicity by itself would not have been covered by the policy, and it is informative to see that the privacy tort now resides firmly in the IP household.  I suspect that count 3 under the Lanham Act also constitutes an excluded IP claim.  So perhaps statutory consumer protection and equitable quasi-contract each could do the trick.  Yet those theories, in any given case, could overlap wholly with IP claims.  The court's opinion suggests that there is something special about the misappropriation of an "advertising idea" that sets this case apart qualitatively from IP claims.  I'm not sure I see it.

Apparently the "advertising injury" language of the insurance coverage here is not without precedent, and the court gave an informative catalog of the "wide variety of concepts, methods, and activities related to calling the public's attention to a business, product, or service [that have] constitute[d] advertising ideas":

• logo and brand name, Street Surfing, LLC v. Great Am. E&S Ins. Co., 776 F.3d 603, 611-612 (9th Cir. 2014);
• patented telephone service enabling sale and promotion of products, Dish Network Corp. v. Arch Specialty Ins. Co., 659 F.3d 1010, 1022 (10th Cir. 2011);
• advertising strategy of "trad[ing] upon a reputation, history, and sales advantage" associated with Native American made products, Native Am. Arts, Inc. v. Hartford Cas. Ins. Co., 435 F.3d 729, 733 (7th Cir. 2006);
• concept of "Psycho Chihuahua" obsessed with Taco Bell food to advertise business, Taco Bell Corp. v. Continental Cas. Co., 388 F.3d 1069, 1072 (7th Cir. 2004);
• word "NISSAN" to promote vehicles to public, constituting "quintessential example of trademark functioning to advertise a company's products," State Auto Prop. & Cas. Ins. Co. v. The Travelers Indem. Co. of Am., 343 F.3d 249, 258 (4th Cir. 2003);
• use of internet domain, CAT Internet Servs., Inc. v. Providence Wash. Ins. Co., 333 F.3d 138, 142 (3d Cir. 2003);
• artwork and product model numbers designed to promote products (claim for trade dress infringement), Hyman v. Nationwide Mut. Fire Ins. Co., 304 F.3d 1179, 1189 (11th Cir. 2002);
• word "fullblood," connoting desirable quality, to advertise Simmental cattle breed, American Simmental Ass'n v. Coregis Ins. Co., 282 F.3d 582, 587 (8th Cir. 2002);
• agent misrepresenting himself as working for another company for purposes of inducing customers to make purchases, Gustafson v. American Family Mut. Ins. Co., 901 F. Supp. 2d 1289, 1301 (D. Colo. 2012); and
• patented technology used to market music for online sales, Amazon.com Int’l, Inc. v. American Dynasty Surplus Lines Ins. Co., 120 Wash. App. 610, 616-617, 619 (2004).

 "Advertising injury" is not "injury caused by other activities that are coincidentally advertised" (quoting Couch treatise).  "Otherwise stated, '[i]f the insured took an idea for soliciting business or an idea about advertising, then the claim is covered ... [b]ut if the allegation is that the insured wrongfully took a ... product and tried to sell that product, then coverage is not triggered'" (quoting Washington precedent and offering authorities in accord from other states).  Thus coverage is excluded in cases such as:

• use related to manufacture and not marketing, Winklevoss Consultants, Inc. v. Fed. Ins. Co., 991 F. Supp. 1024, 1034 (N.D. Ill. 1998);
• conspiracy to fix egg prices, Rose Acre Farms, Inc. v. Columbia Cas. Co., 662 F.3d 765, 768-769 (7th Cir. 2011);
• disparagement of competitor's pineapples to undermine their advertising, Del Monte Fresh Produce N.A., Inc. v. Transp. Ins. Co., 500 F.3d 640, 643, 646 (7th Cir. 2007);
• advertising another's patented method for cutting concrete, Green Mach. Corp., v. Zurich-American Ins. Group, 313 F.3d 837, 839 (3d Cir. 2002);
• design of product, Ekco Group, Inc. v. Travelers Indemnity Co. of Ill., 273 F.3d 409, 413 (1st Cir. 2001);
• misappropriation of product design, Frog, Switch & Mfg. Co. v. Travelers Ins. Co.,
  193 F.3d 742, 749-750 (3d Cir. 1999);
• taking of customer list and solicitation of customers from it, Hameid v. National Fire Ins. of Hartford, 31 Cal. 4th 16, 19-20 (2003);
• manufacture and sale of patented product, Auto Sox USA Inc. v. Zurich N. Am., 121 Wash. App. 422, 427 (2004).

So memorize those, and let me know when you're ready for the exam.

The case is Holyoke Mutual Insurance Co. in Salem v. Vibram USA, Inc., No. SJC-12401 (Mass. Sept. 12, 2018).  Suffolk Law has the oral argument video of Feb. 6.  The case was heard by the full court upon granting direct appeal, and the unanimous opinion was authored by Associate Justice David A. Lowy, a Boston University law grad and former ADA and Goodwin Proctor litigator.

Statute of repose bars tort-like consumer claim, Mass. high court rules

Yesterday the Massachusetts Supreme Judicial Court (SJC) held that a statute of repose bars a claim under the Commonwealth's key consumer protection statute, chapter 93A.  The case examines the oddly "contort" (contracts-torts) role of 93A and occasions a majority-dissent dispute over judicial construction of statute vs. "usurpation of ... legislative prerogative," i.e., corrective justice vs. distributive justice.

Chapter 93A is important in Massachusetts tort law because it is drawn much more broadly than the usual state consumer protection statute.  In a Massachusetts tort case, chapter 93A often provides a parallel avenue for relief and can afford a plaintiff double or treble damages, as well as fee shifting.  That makes it a powerful accountability tool in areas such as product liability, well beyond the usual consumer protection fare in trade practices.

The SJC, per Justice Cypher, published a sound primer on statutes of limitation and repose:

Statutes of repose and statutes of limitations are different kinds of limitations on actions. A statute of limitations specifies the time limit for commencing an action after the cause of action has accrued, but a statute of repose is an absolute limitation which prevents a cause of action from accruing after a certain period which begins to run upon occurrence of a specified event....  A statute of repose eliminates a cause of action at a specified time, regardless of whether an injury has occurred or a cause of action has accrued as of that date....  Statutes of limitations have been described as a "procedural defense" to a legal claim, whereas statutes of repose have been described as providing a "substantive right to be free from liability after a given period of time has elapsed from a defined event." Bain, Determining the Preemptive Effect of Federal Law on State Statutes of Repose, 43 U. Balt. L. Rev. 119, 125 (2014). The statutes are independent of one another and they do not affect each other directly as they are triggered by entirely distinct events.  [Citations omitted.]

Chapter 93A is covered by a four-year statute of limitations.  A six-year statute of repose covers tort actions arising from deficiencies in improvements to real property: "after the earlier of the dates of: (1) the opening of the improvement to use; or (2) substantial completion of the improvement and the taking of possession for occupancy by the owner."

In the instant case, the plaintiff sought relief for damage resulting from a fire 15 years ago.  The plaintiff attributed the fire to multiple deficiencies in electrical work completed by defendant contractors.  Arguing that the electrical work was not done in compliance with the state code, the plaintiff characterized 93A as "neither wholly tortious nor wholly contractual in nature."  The court, however, found the plaintiff's claim "indistinguishable from a claim of negligence," so barred by the statute.

Three justices dissented.   Chief Justice Gants in dissent pointed out that the general statute of repose does not mention chapter 93A, while the general limitations provision does.  And yet another statute, stating terms of both limitation and repose, purports to govern both contract and tort malpractice actions against doctors.  So the legislature knew how to write what it meant.  The general statute of repose, the chief observed, predated chapter 93A, so could not have anticipated it.  Moreover, statutes of limitation and repose have distinct policy objectives:

In short, as is alleged in this case, the property owner may be barred by the statute of repose from bringing a claim before he or she knows, or reasonably should know, that he or she even has a claim -- even where the defendant has fraudulently concealed the claim from the plaintiff. Consequently, a statute of repose reflects a legislative decision that it is more important to protect certain defendants from old claims than it is to protect the right of plaintiffs to enforce otherwise valid and timely claims.

Thus a statute of repose should not be construed to cover 93A absent plain legislative direction.  The chief concluded: "[T]his is a usurpation of a distinctly legislative prerogative."

The case is Bridgwood v. A.J. Wood Construction, Inc., No. SJC-12352 (Mass. Aug. 29, 2018) (PDF opinion; oral argument via Suffolk Law School).

Mass. App. remands textbook 'keys-in-ignitions' case on foreseeability analysis

Today the Massachusetts Appeals Court published a clean and concise opinion on negligence, focusing on foreseeability as an aspect of duty.  The decision covers basic elements and points of civil procedure, so could be of use to tort profs introducing negligence this semester.  The case is R.L. Currie Corp. v. East Coast Sand & Gravel, Inc., No. 17-P-1186 (Aug. 21, 2018).

The facts are a classic keys-left-in-car-then-stolen scenario, unfortunately involving heavy equipment instead of a car.  Employee of defendant snow-plow service left a front loader running idle and unlocked in a shared company lot.  There had been previous thefts of materials, but not heavy machinery.  Keys were routinely left in unlocked vehicles, but hidden.  In the employee's four-hour absence, the loader was driven by an unknown third party and crashed into two of plaintiff's trucks.

The trial court dismissed for failure of foreseeability, deciding no duty as a matter of law and awarding summary judgment.  The court here aptly reiterated the dual role of foreseeability as an aspect of duty and of causation.  The Massachusetts Supreme Judicial Court previously declined to adopt a doctrine of no liability as a matter of law for "keys left in ignitions" cases, employing general notions of foreseeability instead.  Upon such precedents, the appellate court remanded, concluding that the trial court erred in finding intentional vandalism beyond the scope of foreseeability as a matter of law.

Incidentally, the panel author is relatively new to the court, since July 2017.  Associate Justice Dalila Wendlandt is New Orleans born (close to my heart) and was a proper engineer who built robots at MIT before going to law school, joining the IP litigation group at Ropes & Gray, and publishing in patent law.

[UPDATE, Aug. 25: Only days after this case was decided, shocking video came to light in an ambulance-keys-in-ignition story in my home state of Rhode Island that could fuel law school hypotheticals for months. Miraculously those involved sustained only minor injuries, and complicating matters, the teen perpetrator was autistic. No criminal charges are anticipated. See WJAR Providence.]

3Ps for 1Ls: Advice for the new law student

We have 96 new faces at UMass Law School this fall semester.  New students often ask for advice: how best to prepare for class?  There is no easy answer.  That is, the answer is easy to understand, but there is no getting around the fact that effective law school work is hard.  Here are my three Ps for 1Ls: preparation, perspiration, and postparation.

The first P is preparation.  You have a homework assignment and need to do it.  Especially in a large class, you will be able to hide, so I can’t guarantee accountability.  But not doing the assignment will be your loss.  So many students find themselves too far behind late in the semester, unable to compensate for poor choices early on.  That deficit can become amplified throughout law school.  When class doesn’t cover every aspect of an assignment—we skip cases, or don’t engage with all parts of a case—the student can be misled into thinking that the entirety of an assignment is not important and that the game is in trying to pare down assignments to just what one needs to know.  Make this mistake at your own risk.

Learning in law school is an organic and partly subconscious process.  When you read, for example, an appellate opinion, you are learning much more than what we have time to discuss in class: about jurisdiction, motion practice, client representation, style of argument, standards of review, judicial temperament, and legal writing techniques—not to mention overtones of politics, economics, and culture.  Reading such content across the 1L curriculum is your inculcation of American legal culture, so-called “thinking like a lawyer.”  If you opt out of this process, you will find yourself increasingly lost in law school in a way that will be difficult to put your finger on.  The materials assigned to you have been carefully selected and edited to communicate lessons on the face of the text and between the lines.  Don’t waste the opportunity; you’re paying for it.

The second P is perspiration.  You don’t have to worry about this, because it happens naturally: sweating through class.  Students often are frustrated at the start of law school.  What you thought you prepared thoroughly turns out not to answer the questions asked.  The professor seems not to be giving you “what I need to know.”  Questions often are answered with more questions.  If that’s not often happening in your law school class, then you’re not getting your money’s worth.

Legal education is not like other programs in higher education.  Contrary to popular belief—a belief held even by some misguided university administrators—the job of a law professor in a core course is neither to prepare you for the bar exam nor to prepare you for practice—at least not directly.  To be clear, we calculate that what we do in a core course advances you toward those important goals.  But our aim is not so narrow and not so shallow.  That inculcation of American legal culture again: that’s our aim.  If you can memorize rules and learn IRAC techniques of legal analysis, then you can pass the bar exam.  You don’t have to go to law school for that; you certainly don’t need year-long, five- or six-hour classes for that.  As for the practice of law, that’s much more than we can do in any one class.  The practice of law will be the culminating result of your inculcation of legal culture.  This is the archetype of the whole that is greater than the sum of its parts.

In legal education, the job of the professor is to help you help yourself.  The student bears responsibility for learning.  The process is one of much investment, trial, and often, error and correction.  The professor shows the way through assignments and class work, sometimes correcting the student’s course.  The professor supports you with formative tools; an exam is one of those.  The professor cannot do the work for you, and the professor’s job is not to make the road easy or smooth.  Sometimes a student struggles in dialog with the professor in class and is embarrassed.  There is no cause for embarrassment.  If the student struggled for failure to prepare, then one’s energy would be spent best by circling back to the first P.  If the student struggled because it took time and investment to work toward a productive answer, then the struggle should be worn as a badge of honor.  This is the archetype of growth through adversity.

The third P is postparation.  I’m not the first to use the term.  In legal education, it’s the work you do after a class, related to that class.  As a general matter, you should budget the same amount of time for preparation and postparation.  Both are critical; the learning process is only halfway done when class ends.  Postparation is the time to review what you learned; to pick up the pieces of what you misunderstood or mis-prioritized; to identify remaining knowledge gaps that you will seek to fill by consulting study aids, peers, tutors, TAs, professors; and to build your newly acquired understanding into a comprehensive recall system going forward.  An immediate goal of postparation is to outline a review for the final exam.  By semester’s-end reading days, it will be too late to outline effectively for all of your courses.  More importantly, though, postparation is reinforcement.  Ample empirical research in education has demonstrated that knowledge is committed most thoroughly and fluidly to long-term recall through multiple engagements—at least three.  If you’ve already invested well in the first two Ps, don’t throw away that investment by skimping on the third.

Law school is hard work.  It involves the training of your mind in a new way of approaching problems—not just legal problems, but social and economic problems of public policy.  It takes times and patience to train the mind in a new discipline.  The speed of this acculturation is not necessarily a function of intelligence nor purely a function of determination.  Legal acculturation changes a person, often with collateral ramifications for social, psychological, and even physical health.  Working to the endgame can nevertheless prove worthwhile.  The law is a powerful tool for those who would shape our world.  

Suggested Further Reading:

• Andrew J. McClurg, 1L of a Ride: A Well-Traveled Professor's Roadmap to Success in the First Year of Law School (3d ed. 2017) (Amazon).
• Helene Shapo & Marshall Shapo, Law School Without Fear: Strategies for Success (3d ed. 2009) (West Academic).

Nuisance rule for trees rooted in history, reaffirmed by Mass. high court

In an opinion suitable for textbooks, the Massachusetts Supreme Judicial Court reaffirmed the rule of nuisance that neighbor may not sue neighbor over property damage from a healthy, overhanging tree.

A resident of Randolph, Massachusetts, complained that a neighbor's overhanging tree, a 100-foot sugar oak, had caused property damage by promoting algae on the complainant's roof.  The high court reiterated the historic rule that a property owner cannot be held liable in nuisance for damage caused by a neighbor's healthy tree, whether unruly roots that damage a foundation, or the natural shedding of leaves, branches, and sap.  A neighbor is entitled to trim back offending incursions, the court observed.

The court reaffirmed the historic rule despite the complainant's entreaty to consider alternative approaches from other states.  The rule emerged from a time of lower population density, when it would have been excessively burdensome for property owners to monitor all trees near property lines, the court explained.  "We invite challenge to antiquated laws," the court wrote.  Nevertheless, the court declined to "uproot precedent."  The historic rule continues to have relevance by minimizing litigation, the court reasoned, especially when the law is clear that a neighbor may cut back overhanging branches.

Affirming the lower court, the case is Shiel v. Rowell, No. SJC-12432 (Mass. July 16, 2018) (Cypher, J.).

Money in soccer, money in higher ed: Lazio will never be Juventus; will the UMasses ever be ‘UMass’?

This morning I was reminded of this observation about football (soccer) from The Blizzard (#25, June 2017), spoken by Swedish football manager Sven-Göran Eriksson, now coaching in China, in an interview by football writer Vladimir Novak (@VNovak13):

Well, whether you like it or not, to make a winning team you need money. One could argue that Leicester has won the Premier League title even though they invested far less money than, for example, Manchester United or other clubs, but that was an exception. Fact is, in the long run, if you want to be a big club, you need money. Bayern Munich is Bayern Munich, Barcelona is Barcelona, Real Madrid is Real Madrid and so on. You cannot build a great team without money. I think you have a good example with Lazio. When I was at Lazio, Sergio Cragnotti was the chairman and owner of the club, and he invested a lot of money. And then, after he left, all changed. Lazio are still a big club. Maybe they have the chance to win the Serie A title now and then, but they are not Juventus.

The statement reminds me of why I stopped being a baseball fan many years ago.  The Baltimore Orioles were my Lazio.  They would never be the Red Sox or Yankees.

It struck me that this almost self-evident assertion is true of more than football and baseball—indeed, is true of higher education.  And in higher education, disparate resources play an out-sized role in perpetuating socio-economic disparity and widening the gap of opportunity and wealth that afflicts the United States.

In Arkansas, where I started in academics, the public higher ed system was loosely and unofficially divided in just this way.  The well-resourced University of Arkansas—the top tier never needs a geographic locator (Fayetteville)—served the state’s elite.  The slimly resourced University of Arkansas at Little Rock served an urban working class.  And the resource-starved University of Arkansas at Pine Bluff served the rural and poor—disproportionately African American.  The same dynamic described the state’s law schools in Fayetteville and Little Rock (with few graduate options in Pine Bluff).  Incentivized by monied interests, as usual in politics, the state legislature perennially resisted calls to level the playing field.  The schools themselves were complicit in maintaining the status quo.

I thought Massachusetts would take a more progressive approach with its first and only public law school in Dartmouth.  It hasn’t, at least not yet.  Boston’s many private schools fill in the top-tier options in Massachusetts, while the law school, affiliated with UMass Dartmouth, fits in at the Little Rock-like mid-level, focusing on the working-class South Coast.  The otherwise elite “UMass” (Amherst), the state flagship, has legal research resources—for that matter, research resources in any field—superior to UMass Dartmouth’s, even with no law school there.  UMass Boston might be the state’s Pine Bluff.  Each campus knows its place and stays in its socio-economic lane.

 

There is limited revenue sharing to level the playing field in European soccer and in American baseball.  Those measures resulted when, and only insofar as, the un-level playing field was recognized as a threat to the survival of the sport business model.  That’s OK; sport is business.

Higher education isn’t business.  Higher education is supposed to be about opportunity for all those who merit it.  To be clear, this is a libertarian ideal.  Higher education is about teaching people to fish, not giving fish away.  It’s potentially the best social welfare program ever conceived.

I was reminded of this sport-ed money analogy this morning when I received a text alert that the main library at UMass Dartmouth is closing because of an air conditioning failure—again.  I wonder how often the A/C fails at UMass (Amherst).  You cannot build a great library, law school, university, or team without money.

As a society, we have to come to grips with the role of money in higher education—especially the money managed by foundations that purport independence and entitlement to opacity despite being under the direct control of supposedly transparent public universities.

We have to decide whether higher ed will continue to be part of the wealth-and-opportunity gap problem or part of the solution.  The UMass campuses east of Amherst deserve more than an occasional title.  They should all be Juventus.