The Massachusetts Supreme Judicial Court recently construed the undefined term “advertising idea” in a case of first impression in the Commonwealth, holding that a footwear company’s insurers must provide a defense against an underlying claim alleging unfair use of a former Olympian’s name to promote a line of running shoes.
Holyoke Mut. Ins. Co. in Salem v. Vibram USA, Inc. arose from a lawsuit in which the family of Abebe Bikila sued shoe maker, Vibram, alleging that Vibram used Bikila’s name to promote its FiveFingers line of minimalist running shoes. Bikila won the 1960 Olympic marathon and remains the only athlete in history to win a gold medal while competing barefoot. The complaint alleged that Vibram designed the shoes to “mimic biomechanical properties of barefoot running while providing the protection of a conventional shoe” and named them after Bikila to associate the footwear with his “legendary barefoot Olympic feats.” Bikila’s family brought suit in federal court in Washington state and asserted four causes of action for violations of the Washington Personality Rights Act, the Washington Consumer Protection Act, unfair competition in violation of the Lanham Act, and unjust enrichment.
Vibram was insured under Commercial General Liability (“CGL”) policies with two different insurers – Holyoke Mutual Insurance Company and Maryland Casualty Company. Its policies required the insurers to defend Vibram against any claims seeking, among other things, damages due to “advertising injury,” defined as “the use of another’s advertising idea in your ‘advertisement.’” The policies defined “advertisement” as “a notice that is broadcast or published to the general public or specific market segments about your foods, products, or services for the purpose of attracting customers or supporters.” They did not define the term “advertising idea.” The policies also contained an exclusion for claims arising out of “infringement of copyright, patent, trademark, trade secret, or other intellectual property rights.”
Because the term “advertising idea” was undefined in the policies, the Court was required to look to other jurisdictions for guidance. The Court found that other jurisdictions had defined “advertising idea” broadly to mean an “idea about the solicitation of business and customers,” “idea in connection with marketing and sales and for the purpose of gaining customers,” and “idea for calling public attention to a product or business, especially by proclaiming desirable qualities so as to increase sales or patronage.” Based on these broad definitions, the Massachusetts high court concluded that the Bikila family’s lawsuit constituted a claim seeking damages due to “advertising injury,” thus triggering a duty to defend.
The insurers tried to distinguish the Bikila lawsuit by arguing that it raised claims limited only to Abebe Bikila’s “right of publicity,” and not a covered “advertising idea.” In support, the insurers noted that the Bikila family did not use the name “Bikila” to market a particular product or service and, thus, without a primary meaning, the name “Bikila” could not acquire a secondary meaning or association among consumers. The Court rejected the insurers’ argument, noting that the insurers produced no authority for the notion that an “advertising idea” must have a secondary meaning or “otherwise embody principles of trademark law” in order to trigger an insurer’s duty to defend under a CGL policy.
The Vibram decision is significant for several reasons. First, the decision provides guidance as to the meaning of the undefined policy term “advertising idea,” consulting cases from other jurisdictions to define it to broadly include ideas about marketing, sales, generating business, and soliciting new customers. Second, the decision illustrates the general proposition that liability insurance affords policyholders a broad duty to defend that insurers will be hard-pressed to overcome when relying on nothing more than the interpretation of an undefined policy provision. Finally, the decision highlights the potential overlap between an “advertising idea,” which triggers coverage, and the “infringement of copyright, patent, trademark, trade secret, or other intellectual property rights,” which are often excluded from coverage, thereby providing a basis for argument that such claims also trigger an insurer’s duty to defend.