United States District Court, N.D. New York
GAUNTLETT & ASSOCIATES Attorneys for Plaintiff.
HANCOCK & ESTABROOK, LLP Attorneys for Plaintiff.
SHELTON LIPTAK NOWAK LLP Attorneys for Defendant.
COUNSEL: DAVID A. GAUNTLETT, ESQ. JAMES A. LOWE, ESQ. JAMES
P. YOUNGS, ESQ. JESSICA L. FOSCOLO, ESQ. TIMOTHY E. DELAHUNT,
ESQ. ASHLYN M. CAPOTE, ESQ.
MEMORANDUM-DECISION AND ORDER
D'AGOSTINO, U.S. DISTRICT JUDGE:
360Heros, Inc. ("360Heros") commenced this action
on May 18, 2017, seeking declaratory relief and damages for
Defendant Mainstreet America Assurance Company's
("MSA") alleged breach of contract based on its
"failure and refusal to pay policy benefits and to
defendant 360Heros in an underlying copyright[, ] trademark
and patent . . . lawsuit venued in the United States District
Court for the Northern District of California, styled as
GoPro, Inc. v. 360Heros, No. 16-cv-01944 (the
'GoPro Action')." That same day,
360Heros moved for preliminary injunctive relief.
See Dkt. No. 2.
the motion was fully briefed, the parties indicated that they
were working towards a settlement of this matter. Magistrate
Judge Peebles held a settlement conference on August 21, 2017
and indicated that, while the matter did not settle, the
parties were close to resolving this case. Thereafter, the
parties requested several adjournments to continue
negotiating towards settlement. See Dkt. No. 36. In
a joint status report dated December 1, 2017, the parties
indicated that they "have reached an agreement, being
circulated to principals, providing for a stipulated
dismissal of this lawsuit without further Court conferences.
The parties expect to file such a stipulation no later than
December 18, 2017." Dkt. No. 38. However, during a
December 11, 2017 telephone conference, Magistrate Judge
Peebles noted it is clear that, despite representations made
by counsel, this case is not settled and is headed to
District Judge Mae A. D'Agostino to proceed with this
litigation." As a result of the December 11, 2017
telephone conference, the Court instructed the parties to
supplement the pending motion for injunctive relief and the
before the Court is 360Hero's motion for a preliminary
injunction. See Dkt. No. 2.
360Heros, Inc. manufactures, sells, and distributes
photographic harness products in the United States and
worldwide, including New York. See Dkt. No. 18 at
¶ 1. 360Heros is a Delaware corporation with its
principal place of business in Olean, New York. See
Id. at ¶ 2. Defendant MSA is in the business of
selling contracts of insurance. See Id. at ¶ 4.
MSA is a Florida corporation with its principal place of
business in Jacksonville, Florida. See Id. at ¶
The MSA Policy
Inc. was the named insured on MSA Policy No. BP25610B
effective 07-01-2013 to 07-01-2014 (the "Policy").
See Dkt. No. 18 at ¶ 14. By endorsement,
360Heros was added as a named insured effective 07-01-2013 to
07-01-2016. See Id. CNERD and 360Heros were also
insureds on the MSA policy effective 07-01-2014 to
07-01-2015, and on the policy effective 07-01-2015 to
07-01-2016. See id.
to the Policy, MSA had limits of insurance of $1, 000, 000
per occurrence, $1, 000, 000 personal and advertising injury
limit, and $2, 000, 000 in the aggregate. See Id. at
¶ 15. The Policy provides coverage for "personal
and advertising injury" caused by an offense committed
during the policy period. See Id. at ¶ 16. The
Policy provides for a defense of suits that potentially seek
damages caused by "personal and advertising
injury." Id. at ¶ 17. Specifically, the
Policy provides, in pertinent part, that MSA "will pay
those sums that the insured becomes legally obligated to pay
as damages because of 'bodily injury', 'property
damage' or '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[.]" Dkt. No. 18 at ¶ 18. The Policy
defines "advertisement" as "a notice that is
… published to the general public or specific market
segments about your goods, products or services for the
purpose of attracting customers or supporters. For the
purposes of this definition: a. Notices that
are published include material placed on the Internet or on
similar electronic means of communication; and
b. Regarding web-sites, only that part of a
web-site that is about your goods, products or services for
the purposes of attracting customers or supporters is
considered an advertisement." Id.; see
also Dkt. No. 1-1 at 64. Further, the Policy provides
that "'[p]ersonal and advertising injury' means
injury ... arising out of one or more of the following
offenses: . . . Infringing upon another's copyright,
trade dress or slogan in your 'advertisement.'"
Id.; see also Dkt. No. 1-1 at 66.
The Underlying GoPro Action and Notice to MSA
April 13, 2016, GoPro filed a complaint in the Norther
District of California, alleging that 360Heros infringed on
certain of GoPro's copyrighted images in its advertising,
infringed on its HERO and ABYSS trademarks, and otherwise
engaged in unfair competition. See Dkt. No. 18 at
¶ 19. GoPro's complaint further sought a declaratory
judgment of non-infringement of 350Heros' U.S. Patent No.
9, 152, 019 (the "019 patent"). See Id. at
¶ 20. GoPro further alleges that it acquired a French
company, Kolor SARL, that had been selling the ABYSS rig in
the United States previously in 2014. See Id. at
letter dated April 22, 2016, counsel for 360Heros provided
notice of the lawsuit and a copy of the complaint to MSA.
See Id. at ¶ 24. 360Heros' counsel gave
further notices of the suit's pendency through May and
June 2016. See Id. at ¶ 25. In an August 2,
2016 letter, MSA agreed to defend 360 Heros in the GoPro
Action. See Id. at ¶ 26. MSA subsequently
confirmed that its reservation of rights letter created a
conflict of ...