Wisconsin Court of Appeals Determines That The Glove Fits: Trade Dress Suit Was a Covered Advertising Injury Claim Triggering Duty to Defend

The Wisconsin Court of Appeals reversed a lower court ruling in favor of the insured recently, finding that the insurer of Ross Glove Company did indeed have to duty to defend a lawsuit against Ross alleging, among other things, trade dress infringement.  Acuity v. Ross Glove Company, 2012 WL 1109035 (Wis. Ct. App. 2012).  The case is not really a difficult one, and it is hard to see how the lower court got it wrong.  The underlying suit was brought by Seirus against Ross based on certain cold weather face and neck protection gear sold by Ross through a deal with Cabela's sporting goods stores.  The complaint alleged patent infringement and trade dress infringement.  Trade dress involves the look and feel of the product, and/or its packaging, such that infringement would be an attempt to imitate or "knock-off" the original product. 

Under its Commercial General Liability ("CGL") Policy, Ross was covered against claims for "advertising injury."  The trade dress allegations, as they often do in cases involving retail consumer products, including claims that the packaging for the allegedly infringing products was substantially similar and likely to confuse customers as to whether the products sold by Ross were associated with the Seirus products.  It is well settled that packaging is advertising and that putting a packaged product on retail shelves is "publishing" the advertising to the public.  Therefore, the allegations regarding the alleged confusion over the shelf products constituted claims of injury related to the advertising of Ross.  It is worth noting that Wisconsin follows the general rule regarding the duty of an insurance company to defend a lawsuit with potentially covered claims in it. If any of the claims in the complaint could be covered, then the insurer must pay to defend all of the claims, even, in this case, the patent claims which were apparently not covered by the policy.  Therefore, as a result of the ruling, Acuity has to pay to defend the entire lawsuit as long as the trade dress claims remain part of the case. 

The lawsuit sought enhanced Lanham Act damages against Ross claiming intentional trade dress infringement.  Acuity sought to get out of the defense of the suit based on an exclusion in the policy for "knowing" or "intentional" infringement.  However, as the court pointed out, the lawsuit also alleged damages based on unintentional infringement, and while intent is a factor in a trade dress case, it is not a prerequisite that intent be demonstrated in order to succeed on a trade dress claim.  Moreover, while the complaint contained a bare allegation of intent and damages as a result of it, it did not recite any specific facts in support of the claim that Ross intentionally imitated the Seirus trade dress.  Under these circumstances, the court held that the exclusion for intentional activity would not excuse Acuity from defending the case.

This is just another reason why it is important to have CGL insurance for a business, because trade dress claims continue to increase.  Also, as I have pointed out before, a 2007 survey of litigants found that the average cost per party of trade dress litigation was $700,000.  Many companies do not even realize they have coverage for advertising injury related to trade dress or other intellectual property claims, and they may fail to notify their insurance company of a lawsuit for infringement.  It is critical to notify the CGL carrier of such lawsuits.  It is also important to have counsel that understands the area of IP insurance coverage if the insurer balks at defending the case.  I have had insurers deny coverage for a client initially, but have gotten them to reverse themselves and pay for the defense after a challenge from  me arguing that the policy does trigger the duty to defend.  For a small business that cannot afford to pay six figures to get out of a lawsuit, the question of the duty to defend can become a "bet the company" situation.  That is why it is critical to have experienced advisers dealing with this kind of situation.