The opinion of the court was delivered by: D. Brooks Smith, Chief Judge.
MEMORANDUM OPINION AND ORDER
Plaintiff, Walter L. Maddox, III, is a musician who performs
in a group named "The Marcels." In order to protect his
professional livelihood, plaintiff purchased a one-year
commercial general liability policy from United States Fidelity
and Guaranty Company ("USF & G") for each year between 1992 and
the present. Dkt. no. 18. The policies from 1998 through 2002
may have been issued by both USF & G and St. Paul Fire and
Marine Insurance Company ("St.Paul"), since St. Paul's name is
at the top of many of the policy pages and the instructions read
that any questions about revisions should be directed to "your
St. Paul representative." Dkt. no. 16, Ex. 8-11.
All of the policies contained coverage for "[a]dvertising
injur[ies] caused by an offense committed in the course of
advertising [plaintiff's] goods, products or services." Dkt. no.
1, Ex. 1, at 3. The policies define advertising injury as "an
injury arising out of one or more of the following offenses:
a. Oral or written publication of material that
slanders or libels a person or organization's
goods, products or services;
b. Oral or written publication of material that
violates a person's right of privacy;
c. Misappropriation of advertising ideas or style
of doing business; or
d. Infringement of copyright, title or slogan."
Id. at 7-8. The policies also contain a "first publication"
policy exclusion which reads: "[t]his insurance does not apply
to `personal injury' or `advertising injury' . . . arising out
of oral or written publication of material whose first
publication took place before the beginning of the policy
In 2001, Sunny James Cvetnic filed a complaint in this court
against Maddox and the four other individuals currently in his
musical group (hereinafter the "Marcels defendants"). Dkt. no.
1, Ex. 2; Cvetnic v. Maddox, Civ. No. 01-82. That underlying
action was the catalyst for the instant matter. Cvetnic stated
in his complaint that he obtained a trademark registration
number for the Marcels mark on June 25, 1996, and that he never
consented to the Marcels defendants' use of this trademark.
Id., ¶¶ 5, 7. Therefore, Cvetnic asserted claims for (1)
violation of the Lanham Act, protecting trademarked material;
(2) violation of the Pennsylvania Trademark Act; (3) violations
of Pennsylvania's Unfair Trade Practices and Consumer Law and
(4) unfair competition. Id. Although Cvetnic noted in his
complaint that the Marcels trademark was first used on February
9, 1961, he did not state the date of the first infringement.
Id., ¶ 5. He merely stated that "[s]ubsequent to Plaintiff
Sunny James Cvetnick's registration and use of the trademark The
Marcels, Defendants have knowingly promoted, booked and
advertised their own musical group under the Plaintiffs
registered trademark, The Marcels." Id., ¶ 8.
Defendants USF & G/St. Paul initially determined that the
Cvetnic complaint alleged an advertising injury, and USF & G
agreed to defend Maddox in the underlying action subject to a
reservation of rights, which stated in relevant part that "[i]f
it is determined that such infringement [alleged by Cvetnic]
first took place
prior to the inception of coverage, coverage will be precluded
for this claim." Dkt. no. 4, Ex. 10. Subsequently, on June 20,
2001, USF & G/St. Paul told Maddox they were no longer obligated
to provide Maddox with a defense in the Cvetnic action, based
on information he provided to them showing that he performed as
part of the Marcels in 1961. Dkt. no. 4, Ex. 13. Based on this
information, defendants concluded that the Cvetnic lawsuit fell
under the "first publication" policy exclusion.
Plaintiff instituted the current action against USF & G and
St. Paul requesting, inter alia, a declaratory judgment on the
insurers' duty to defend him in the Cvetnic action. Plaintiff
then filed a motion for temporary restraining order enjoining
defendants from withdrawing their previous agreement to provide
Maddox with a defense and ordering Defendants to pay all of
Maddox's counsel fees and expenses incurred by his present
counsel. Dkt. no. 4. On August 8, 2001, I severed the
declaratory judgment count from the from all the remaining
counts, and stayed discovery. ...