Monday, November 5, 2012

Assignment of Claims Results in Zero for Trademark Owner Despite $1,000,000 Settlement

State Farm Fire and Casualty Company v. King Sports, Inc., No. 11-16169 
(11th Cir. September 4, 2012).

State Farm sought and obtained a declaration that it need not afford coverage to its insured, Kings Sports, Inc. ("King Sports"), with respect to a lawsuit brought by and a judgment obtained by Cleveland Golf because King Sports failed to abide by, satisfy, comply with, or fulfill the duties imposed on it by the policy's general conditions," including an obligation to cooperate in the defense of claims made against it.

            Cleveland Golf sent King Sports a cease-and-desist letter, alleging that King Sports was violating Cleveland Golf's trademarks by advertising and selling golf clubs that looked like clubs manufactured by but which were not, in fact, manufactured by or with the permission of Cleveland Golf. State Farm sent King Sports a reservation-of-rights letter informing King Sports that State Farm reserved its right to not defend or indemnify King Sports with respect to Cleveland Golf's claims under certain policy exclusions. Eventually, when no resolution of the dispute was reached, Cleveland Golf filed suit. In the Complaint, Cleveland Golf averred direct trademark infringement, unfair competition, false advertising, trade dress infringement, trademark dilution, trademark counterfeiting, unfair and deceptive trade practices, violations of the Georgia anti-dilution statute, and common-law trademark infringement.
            State Farm retained an attorney to represent King Sports and Chang. In a November 2009, letter addressed to King Sports and received by King Sports, State Farm again made a reservation of rights, outlined King Sports' duty to cooperate in the investigation and defense of Cleveland Golf's lawsuit, and then advised the insured’s that it had retained an attorney as counsel for King Sports and Chang.
            An individual who had worked with the attorney on behalf of King Sports told the attorney that he was no longer employed by it.
           King Sports did not cooperate with the attorney hired by State Farm and the attorney was allowed to withdraw from the case.
The alleged former employee of King Sports then entered into a settlement discussions with Cleveland Golf.  When State Farm learned of these settlement discussions, it sent King Sports yet another letter, reiterating its request that it contact State Farm immediately and pointing out that portion of the insurance policy which provided that, "[e]xcept at their own cost, no insureds will voluntarily make a payment, assume any obligation or incur any expense, other than for first aid, without our consent." 
In the settlement agreement entered into by King Sports, the alleged former employee of King Sports agreed to a $1,000,000 judgment, which he executed as the "owner" of King Sports.
Cleveland Golf agreed not to pursue King Sports for the amount of the judgment, agreeing that it would, instead, seek to collect the amount from State Farm, and King Sports assigned any claims it might have against State Farm to Cleveland Golf under its insurance policy.  
King Sports did not inform State Farm of the Settlement Agreement, nor did anyone obtain State Farm's consent to it. Cleveland Golf understood that approval of any settlement was required under the terms of the insurance policy in order for coverage to apply.
The district court entered a consent judgment in favor of Cleveland Golf and against King Sports in the amount of $1,000,000, in accordance with the settlement agreement.         
This declaratory judgment action to obtain a no-coverage declaration then ensued. The Appeals Court sustained summary judgment for State Farm. It held that because King Sports failed to cooperate in the defense of that lawsuit, notwithstanding State Farm's efforts, recovery on the policy is appropriately foreclosed for King Sports, and, by extension, Cleveland Golf.   
The moral of the case is always invite the insurer to the settlement conference or mediation, even though the insurer is denying coverage. Be sure to read the language of the insurance policy and check for cooperation and consent clauses such as those contained in the above case. Always communicate with your insurer, and keep it informed of the status of the case, even if it is denying coverage.

Saturday, June 16, 2012

The First Lesson from the HP v. Oracle Trial

The First Lesson from the HP v. Oracle Trial

By Suzanne K. Nusbaum of Impartia

I have been watching the Hewlett Packard v. Oracle Corporation trial in the California Superior Court, Santa Clara County, Case no. 1-11-CV-203163.

The case results from a failed settlement in Hewlett-Packard Company v. Hurd, SCCSCT Case No. 1-10-cv-181699. That case was dismissed with prejudice on September 22, 2010 following the execution of a written settlement agreement. The settlement negotiations in the Hurd employment case were handled directly by the parties and their attorneys.  In dispute in this pending case is Oracle’s compliance with paragraph 1 of the Hurd settlement agreement.

The courtroom is filled with partners of major national law firms, whose hourly rates you can imagine. Each side has a large team of attorneys and support personnel, in house counsel and many witnesses.

HP has been presenting its case for breach of this settlement agreement, methodically offering into evidence emails of the negotiations and testimony by the negotiators about how the terms evolved and what they mean. There are hundreds of exhibits. The most crucial documentary evidence to date interpreting the language of paragraph 1 is contained in an email from Oracle’s counsel, Dorian Daley to HP.

Had these negotiations occurred as part of a mediation, all of this evidence would be inadmissible. The hundreds of thousands of dollars spent in discovery and voluminous trial presentation could have been saved.

The California Evidence Code § 1119 provides the protection. It reads, in pertinent part:
(a) No evidence of anything said or any admission made for the purpose of, in the course of, or pursuant to, a mediation or a mediation consultation is admissible or subject to discovery, and disclosure of the evidence shall not be compelled, in any … civil action, ….
(b) No writing … that is prepared for the purpose of, in the course of, or pursuant to, a mediation or a mediation consultation, is admissible or subject to discovery, and disclosure of the writing shall not be compelled, in any … civil action… .
(c) All communications, negotiations, or settlement discussions by and between participants in the course of a mediation or a mediation consultation shall remain confidential.

At the conclusion of the July 7th  trial session, Judge Kleinfeld urged the parties to attempt settlement again. He relayed an offer from the prior settlement conference judge to meet with the parties at no charge to help them resolve the dispute.

Communications in a settlement conference do not fall under mediation’s statutory protection from disclosure and discovery. Evidence Code § 1117 specifically provides that mediation confidentiality does not apply to a settlement conference pursuant to Rule 3.1380 of the California Rules of Court. And a recent federal case, In re MSTG, Misc. No. 996 (Fed. Cir. 4/8/2012), holds that there is no settlement negotiation privilege that would make negotiation documents or discussions inadmissible.

When negotiating, you should have a written mediation agreement such as that used in The Facebook Inc. v. Pacific Northwest Software, Inc., 640 F3d 1034 (9th Cir. 2011). There the mediation agreement which everyone signed before commencing mediation provided that: “all statements made during the course of the mediation or in mediator follow up thereafter at any time prior to complete settlement of this matter are privileged settlement discussions… and are nondiscoverable and inadmissible for any purpose including in any legal proceeding… No aspect of the mediation shall be relied upon or introduced as evidence in any arbitral, judicial, or other proceeding.” Id. at 1041. The Ninth Circuit Court of Appeals held that this mediation confidentiality agreement precluded the Winkelvoss twins from introducing in support of their claims any evidence of what Facebook said, or did not say, during the mediation. Without such evidence, they had no case. Mediation confidentiality brought that litigation to an end.

Label your mediation communications as confidential pursuant to Evidence Code § 1119. Enlist the services of the mediator to clarify any ambiguous terms and conditions. And hopefully you will avoid the morass that HP and Oracle find themselves in today.

The first lesson to be learned from the HP v. Oracle case is for a timely and cost effective resolution to your dispute – to protect the confidentiality of your settlement negotiations, save money and ensure swift enforcement of your settlement—use mediation.