On October 13, 2016, the Business Litigation Session of Suffolk Superior Court entered an Amended Memorandum and Order granting summary judgment to the Holyoke Mutual Insurance Company (“Holyoke”) and the Maryland Casualty Company (“Maryland”) against Vibram USA (“Vibram”), a Massachusetts-headquartered running shoe manufacturer. company in a coverage dispute arising out of the 1960 Olympics in Rome.
The Superior Court decision analyzed the extent of coverage that Vibram’s Commercial General Liability (“CGL”) policies afforded for a claim of unauthorized commercial use of a deceased person’s name.
Declaratory judgment filed after reservation of rights under advertising injury coverage
Holyoke and Maryland issued commercial general liability policies to Vibram that provided, among other coverages, coverage for losses from “personal and advertising injury” liability.
Under the policies, ‘personal and advertising injury’ was defined to include:
- Oral or written publication, in any manner, of material that violates a person’s right of privacy,
- The use of another’s advertising idea in your ‘advertisement,’ or
- Infringing upon another’s copyright, trade dress or slogan in your ‘advertisement.'”
In 2015, the family of one Abebe Bikila, who had died in 1973, sued Vibram, seeking $15 million in damages, in the United States District Court in Tacoma, Washington.
The Bikila Family sued principally under the state of Washington’s “Personality Rights Act.” This law provides that “Every individual or personality has a property right in the use of his or her name, voice, signature, photograph, or likeness.” This law is one of the most liberal in the nation as it applies to deceased personalities and grants to the heirs of the deceased personality the right to sue for infringement of the property rights granted by the act.
Vibram tendered the Bikila Family’s suit to Holyoke and Maryland for defense. The insurers defended under reservations of rights and commenced a declaratory judgment seeking a ruling that they had no duty to defend under their policies. Additionally, the insurers sought a declaration that they had the right if no there were no coverage to recover the defense costs expended on behalf of Vibram.
Abebe Bikila’s 1960 Olympic marathon record running without shoes
Abebe Bikila was a legendary Ethiopian marathoner known for winning the 1960 Olympic Marathon with a record time. In 1964 Bikila became the first Olympian to win two consecutive gold medals in the marathon. Bikila won his second Olympic marathon by a margin of more than four minutes and set a world record.
Mr. Bikila died in 1973, as the result of complications from a serious 1968 motor vehicle accident that had left him paralyzed.
Mr. Bikila, however, is still remembered in the running world for his 1960 Olympics. He was a last-minute substitute for a member of the Ethiopian team who took sick. He arrived in Rome without adequate running shoes. Used to running barefoot in Ethiopia, Mr. Abebe decided a couple of hours before the race to run barefoot.
His record time in finishing the marathon first while running barefoot caused a sensation in the running world. There are awards and events named after him to this day. The New York Road Runners, the club that sponsors the New York Marathon, has had since 1978 an annual Abebe Bikila Award, awarded to a person for their contribution to long-distance running.
Vibram’s Abebe trademark and “barefoot” running shoes
Vibram manufactures “minimalist” footwear intended to closely approximate barefoot running conditions. The company’s shoe products have thin, flexible soles that are contoured to the shape of the human foot, including visible individual sections for the toes.
Vibram uses more than 35 different trade names for its running shoes including names such “Alitza,” “Classic,” “EL-X,” “Jaya,” “Lontra,” “Speed,” “Trek LS,” and “Vybrid Sneak.” However, among its trade names for its running shoes are names such as “Bikila,” “Bikila EVO,” “Bikila EVO WP,” and “Bikila LS.”
Because of the popularity of these specialized running shoes and Mr. Bikila’s unique association with barefoot running, Vibram’s parent company filed for a trademark of the name “Bikila” for footwear in 2009.
The only problem with the use of Mr. Bikila’s name for Vibram’s commercial purposes was that no one in the Bikila Family ever consented to the use of Mr. Bikila’s name by Vibram.
Vibram and insurers cross-move for summary judgment
Both Holyoke and Maryland moved for summary judgment declaring that the claims in the Bikila Family’s suit were not covered, and Vibram’s cross-motion for partial summary judgment declaring that the insurers had, at least, initially a duty to defend Vibram in the Bikila Family’s suit.
Vibram argued that a duty to defend arises under the clauses e, f, and g of the definition of ‘advertising injury’ quoted above from the insurers’ policies relating to advertising injury coverage.
None of the three grants of coverage for advertising injury apply to infringement of right to publicity
The court considered each of the definitions in the order that they appeared in the policies.
The first, “e” provided coverage for statements or publications that “violates a person’s right of privacy.”
The court noted that Massachusetts, whose law applied to the policies, distinguishes the right of privacy and the right to publicity by statute.
a ‘Right of Privacy’ and a ‘Right of Publicity’ are different legal rights
General Laws c. 214, § 3A provides a civil action for using, among other things, a person’s name “for advertising purposes or for the purposes of trade without his written consent.” However, this statute must be construed to protect rights distinct from those protected by G.L. c. 214, § 1B, that provides a right of action for “unreasonably, substantial or serious interference with [a person’s] privacy.”
Based on these differing statutory rights, the court found that the ‘Right of Privacy’ and the ‘Right of Publicity’ are different legal rights and what each of these rights protects has been well defined in Massachusetts for several decades. On that basis, the court found that the Bikila Family’s suit did not involve a claim that Vibram’s actions invaded any right to privacy but instead involved a claim of Vibram infringing their right to publicity and, therefore no coverage applied.
The second provision, “f” involved the use of “another’s advertising idea in the insured’s ‘advertisement’.”
In this instance the court analyzed the nature of an “advertising idea” and concluded that, “The Bikila Family has not used Abebe Bikila’s name to promote or commercialize any particular product or service. It is famous and commercially valuable because of Abebe Bikila’s personal accomplishments, not because the Bikila Family has used it as an advertising idea for a product or service.”
The court then found that finally that if, as alleged, the Bikila Family is the owner, the property right is a classic ‘personality right’ or ‘right of publicity’ not an advertising idea.
The third and final provision, “g,” provides coverage for “infringing upon another’s copyright, trade dress or slogan in your ‘advertisement.’”
The court acknowledged that Vibram might be using Bikila as a slogan to promote its minimalist line of running shoes and apparel, but noted the Bikila Family did not use it as a catch phrase to promote any product. The court further noted that the Bikila Family was not complaining that it suffered loss because Vibram used a slogan [Mr. Bikila’s name] that the Bikila Family used to sell a line of products or services to promote Vibram’s particular products.
The court found that their claim is that Vibram used the name Bikila, which is valuable because of the personal achievements of Abebe Bikila, to promote the sale of running gear without authorization in violation of Abebe Bikila’s right to publicity, which the Family now owns.
Court awards summary judgment to insurers and Vibram appeals and then withdraws appeal
After analyzing the “right to publicity” as the underlying basis to the Bikila Family’s suit and finding that the advertising injury coverages of the CGLs involved in the suit did not cover an insured’s infringement of such a right, the court concluded that a reasonably informed person would not find that “any [loss alleged in the Underlying Action] fits the expectation of protective insurance reasonably generated by the terms of the policy.”
Before the Amended Memorandum and Order described above entered, Vibram had filed a notice of appeal. However, after the entry of the Amended Memorandum and Order, Vibram withdrew its appeal and the parties filed a stipulation of dismissal with prejudice ending further any further proceedings.
The Bikila Family’s lawsuit in the federal court in Washington continues with the parties to that suit filing for summary judgment over the Bikila’s Family’s claim to own Mr. Bikila’s rights to publicity.