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In Eighth Promotions v. Cincinnati Ins. Cos., 2016 Ohio App. LEXIS 4119 (Ohio Ct. App. Oct. 11, 2016), the Ohio appellate court held that a letter forwarded to the insured by a copyright holder requesting that the company conduct a self-audit into its alleged copyright violations constituted a demand for non-monetary relief and thus fell within a policy’s definition for “claim.”  The same court also held that the insured could not stretch the scope of the claim or subsequent settlement to circumvent the policy’s copyright infringement exclusion.

The insured, Eighth Promotions, manufactured and sold sports awards and business gifts.  The company’s Operating Agreement provided indemnification protection to its officers and directors, stating that the company would “indemnify and hold harmless” its officers and directors “[i]n any “threatened . . . claim, action or proceeding to which any officer or any [director] . . . is [a] party or is threatened to be made a party by reason of its or his activities on behalf of [Eighth Floor].”  Id. at *1-2.  The company purchased a D&O liability policy, which contained an insuring agreement covering “all ‘loss’ which the ‘company’ is required to pay as indemnification to the ‘individual insureds’ resulting from any ‘claim’ first made during the ‘policy period’ . . . for a ‘wrongful act’.”  Id. at *15-16.  The policy defined a “claim” in part as:

  1. A written demand for monetary damages or non-monetary relief; or

  2. A civil proceeding commenced by filing of a complaint or similar pleading[.]

Id.  “Loss” included “defense costs.”  Id. at *16.

The policy also had an intellectual property exclusion, but the exclusion did not apply to claims brought against “individual insureds,” such as the company’s officers or directors.  The exclusion stated that the insurer was not liable to pay, indemnify or defend any “claim”:

K. Based upon, arising out of, or in consequence of, or in any way involving actual or alleged infringement of copyright, patent, trademark, trade secret, service mark, trade name, or misappropriation of ideas or trade secrets or other intellectual property rights; provided, however, this exclusion shall not apply to any ‘claim’ against any ‘individual insureds’;

Id. at *17.

In May 2011, the insured received a letter from a trade group, the Business Software Alliance (BSA), investigating on behalf of its member companies “possible instances of illegal duplication of certain software.”  The letter contended that Eighth Promotions had installed on its computers more copies of software programs than it was licensed to use.  Id. at *1.  In lieu of litigation, BSA requested that the insured investigate and audit all of the software published by the BSA members on its computers, as well as the software licenses and proofs of purchase for those licenses, and share the results of its self-audit with BSA.  Id. at *3-4.  The insured tendered the letter to its insurer, which denied coverage on the ground that the letter did not constitute a “claim” because it was neither a “written demand for monetary damages or non-monetary relief” nor a “civil proceeding commenced by filing a complaint or similar pleading.”  Id. at *5.

The insured retained counsel and conducted an audit, revealing numerous instances of unauthorized software installations.  Id. at *6.  After sharing the results of the audit with BSA, BSA offered to settle the dispute under certain terms and conditions, including a payment of $179,393.  Id. at *8.  By entering the proposed settlement, BSA promised that its member clubs would “forego the filing any lawsuit against Eighth Floor and will release Eighth Floor from any liability related to past infringement of the copyrights in the software products listed below due to Eighth Floor’s use and/or installation of those products on Eighth Floor’s computers.”  Id. at *9.  The insured tendered the settlement offer to its insurance carrier, which denied coverage under the intellectual property exclusion.  Id. at *10.  The insured settled the dispute, obtaining a release for the company, as well as for its officers and directors.  Coverage litigation ensued.

The trial court in the coverage litigation granted the insurer summary judgment, holding that the initial “audit” letter did not constitute a claim and that the intellectual property exclusion barred coverage.  On appeal, the appellate court reversed in part.  Id. at *11.

The appellate court held that the May 2011 BSA letter, which inquired about instances of copyright infringement and offered to permit the insured to conduct a self-audit in lieu of litigation, constituted a “claim” to implicate coverage under the policy.  The court rejected the insurer’s characterization of the audit letter as giving “Eighth Floor an opportunity to conduct its own company-wide investigation to determine whether any copyright infringement had occurred.”  Id. at *18.  Instead, the court concluded that the letter provided the insured an opportunity to determine “the extent of Eighth Floor’s copyright violations—not whether Eighth Floor had committed copyright violations.”

The court next looked to the dictionary definitions for “demand,” “non-monetary” and “relief,” all used within the phrase “A written demand for monetary damages or non-monetary relief” to determine the meaning of “claim.”  The court attributed broad meanings to these terms, observing:

“Demand” is defined as “the assertion of a legal right or procedural right.”  Black’s Law Dictionary 522 (10th Ed.2014).

“Non” is defined as “not; no.” Id. at 1212. “Monetary” is defined as “of, relating to, or involving money.” Id. at 1158.

“Relief” is defined as “the redress or benefit, esp. equitable in nature (such as injunction or specific performance), that a party asks of a court.  Also termed remedy.” (Emphasis sic.)  Id. at 1482. “Remedy” is defined as “the means of enforcing a right or preventing or redressing a wrong; legal or equitable relief.” Id. at 1485.  [Internal brackets removed.]

Based on these broad meanings, the court held that the audit letter satisfied the definition for “claim.”  The court explained:

. . . [A]lthough the audit request gave Eighth Floor the “opportunity” to conduct a company-wide software audit, it implied that if Eighth Floor did not take up this “opportunity,” then the matter would proceed to litigation, where the BSA could have achieved the same result. The audit request also sought the preservation of evidence and stated that Willis should not attempt to purchase any software from sales representative of these companies until the matter was resolved.

These measures were the BSA’s “means of enforcing a right” and “preventing a wrong” within the plain and ordinary meaning of “remedy.” See Gold Tip, LLC v. Carolina Cas. Ins. Co., D. Utah No. 2:11-CV-00765-BSJ, 2012 WL 3638538, *4 (Aug. 23, 2012) (a written demand for non-monetary relief can encompass a letter that coerces conduct of the policyholder through the threat of using the legal process to compel that conduct.).

Id. at *22.

The court, however, held that the intellectual property exclusion prohibited coverage for the settlement.  Eighth Promotions argued that the exclusion’s exception for claims against “individual insureds” (meaning, the insured’s directors and officers) applied to trump the coverage denial.  Id. at *23.  To support its argument, Eighth Promotions relied upon the broad standard of interpreting pleadings for evaluating the duty to defend.  Under Ohio law (and the law of most jurisdictions), a duty to defend can be implicated where the allegations in a complaint support or allege an unpled claim that potentially is within the policy coverage.  Id. at *26.  Here, Eighth Promotions argued that although BSA’s demands were directed at the company, because the company’s officers and directors could be held vicariously liable for copyright infringement if BSA filed suit against the company, BSA’s demands contained a claim against the directors and officers that fell within the exception of the intellectual property exclusion.  Eighth Promotions argued:

Vicarious ‘liability for copyright infringement may be imposed upon an officer, directors, or shareholder so long as the individual ‘has the right and ability to supervise the infringing activity’ and also [2] has a direct financial interest in such activities. . . . As such, the Eighth Floor officers and directors were jointly and severally liable on [the] BSA’s claim. . . .

Had the matter not settled, the BSA would have named the officers and directors in its complaint because Eighth Floor was not solvent to the full extent of the potential damages. Because copyright infringement allows for joint and several liability, because the BSA was aware that Eighth Floor was closely held, and because the directors and officers constituted a viable source of recovery who necessarily shared equally in the liability, any lawyer drafting the complaint would be obligated to include the directors and officers as defendants.  [Internal brackets omitted.]

Id. at *25.  As further proof of the existence of a claim against Eighth Promotions’ officers and directors, the company also pointed to the release it had obtained for them.

The appellate court rejected the argument, stating that Ohio law did not support the proposition that “an insurer has a duty to defend an otherwise excluded ‘claim’ where the allegations in that ‘claim’ could potentially or arguably lead to another ‘claim’ which may be within the policy’s coverage.”  According to the court, the only “real” claim was made against the company:

The only real “claim” at issue here is the settlement offer which did not demand any monetary relief from Eighth Floor’s officers or directors or contain any language that could potentially or arguably be construed as a written demand for monetary (or non-monetary) relief against Eighth Floor’s officers and directors.

Id. at 27.  Nor could an insured use a release provision in a settlement agreement to bootstrap coverage by characterizing the release as a written demand for monetary or non-monetary relief:

It included a provision offering to release Eighth Floor’s officers and directors from liability if Eighth Floor complied with its demands, but this provision cannot potentially or arguably be construed as a written demand for monetary (or non-monetary) relief against Eighth Floor’s officers and directors

Id.  The case was remanded back to the trial court to determine whether the exclusion barred the insurer’s duty to defend for the audit letter.

What this case means:  This case serves as a reminder that for claims-made policies that define the meaning of “claim,” the definition “written demand for monetary damages or non-monetary relief” can have a very broad meaning.  Here, the court concluded that a self-audit committed by the insured pursuant to a claimant’s notice letter satisfied this definition.  At the same time, the court rejected the insured’s attempt to broaden the scope of a claim, or to bootstrap coverage through a broad release in a settlement (even if obtaining additional releases in such a settlement was customary).  In essence, the court concluded that an insured may not goldmine for unstated claims or causes of action to broaden the scope of a settlement agreement from the uncovered to the covered.

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