The opinion
1
2
3
4 UNITED STATES DISTRICT COURT
5 NORTHERN DISTRICT OF CALIFORNIA
6
7 ALIVECOR, INC., Case No. 21-cv-03958-JSW
8 Plaintiff,
ORDER GRANTING MOTION TO
9 v. DISMISS COUNTERCLAIM
10 APPLE INC., Re: Dkt. No. 47
Defendant.
11
12
13 Now before the Court for consideration is the motion to dismiss Defendant Apple Inc.’s
14 (“Apple”) counterclaim for indemnification filed by Plaintiff AliveCor, Inc. (“AliveCor”). The
15 Court has considered the parties’ papers, relevant legal authority, and the record in the case, and it
16 finds this matter suitable for disposition without oral argument. See N.D. Civ. L.R. 7-1(b). The
17 Court VACATES the hearing scheduled for May 20, 2022. For the following reasons, the Court
18 GRANTS AliveCor’s motion to dismiss the counterclaim.
19 BACKGROUND
20 AliveCor initiated this lawsuit against Apple on May 25, 2021, alleging antitrust violations
21 and unfair competition claims against Apple. AliveCor alleges that Apple changed the heart rate
22 algorithm on the Apple Watch and watchOS, which rendered AliveCor’s heart rate analysis app
23 incapable of providing reliable heart rate analysis. AliveCor alleges Apple’s conduct constitutes
24 anticompetitive conduct under federal antitrust laws and is unlawful or unfair conduct under
25 California’s Unfair Competition Law.
26 AliveCor has developed apps for iOS and watchOS. (Counterclaim ¶ 6.) App developers
27 who wish to offer their apps on the App Store, like AliveCor, must enter into several agreements
1 grants a developer access to tools and software developed by Apple and governs distribution
2 through the App Store for apps that use Apple’s software and services. (Id. ¶¶ 7-8.) Apple alleges
3 that AliveCor is and remains a party to the License Agreement. (Id. ¶ 7.)
4 The License Agreement contains an indemnification provision which provides:
5 To the extent permitted by applicable law, You [AliveCor] agree to
indemnify and hold harmless, and upon Apple’s request, defend
6 Apple… from any and all claims, losses, liabilities, damages, taxes,
expenses, and costs, including without limitation, attorneys’ fees and
7 court costs (collectively, ‘Losses’), incurred by [Apple] and arising
from or related to any of the following:…(i) Your breach of any
8 certification, covenant, obligation, representation or warranty in this
Agreement…; (ii) any claims that Your Covered Product or the
9 distribution, sale, offer for sale, use or importation of Your Covered
Product (whether alone or as an essential part of a combination),
10 Licensed Application Information, metadata, or Pass Information
violate or infringe any third party intellectual property or proprietary
11 rights; (iii) Your breach of any of Your obligations under the
EULA…for Your Licensed Application; (iv) Apple’s permitted use,
12 promotion or delivery of Your Licensed Application, Licensed
Application Information, Safari Push Notification, Safari Extension
13 (if applicable), Pass, Pass Information, metadata, related trademarks
and logos, or images and other materials that You provide to Apple
14 under this Agreement…; (v) any claims, including but not limited to
any end-user claims, regarding Your Covered Products, Licensed
15 Application Information, Pass Information or related logos,
trademarks, content or images; or (vi) Your use (including Your
16 Authorized Developer’s use) of the Apple Software or services, Your
Licensed Application Information, Pass Information, metadata, Your
17 Authorized Test Units, Your Registered Devices, Your Covered
Products, or Your development and distribution of any of the
18 foregoing.
19 (Id., Ex. A § 10 (“Section 10).) Section 10 also prohibits the app developer from entering “into
20 any settlement or like agreement with a third party that affects Apple’s rights or binds Apple in
21 any way…” (Id.)
22 Apple alleges that AliveCor’s claims “arise from or relate to, at least in part, [AliveCor’s]
23 use of covered Apple Software or Services, its Covered Products, and/or its development of apps
24 submitted to and/or published to the App Store.” (Id. ¶ 13; id. ¶¶ 16-17.) As a result, Apple has
25 filed a counterclaim alleging that it is entitled to indemnification pursuant to Section 10 of the
26 License Agreement including attorney’s fees and court costs incurred in defending this litigation
27 and pursuing its counterclaim.
1 defendant cannot recover attorneys’ fees or costs incurred defending federal antitrust or UCL
2 unfair competition claims. Second, AliveCor asserts that under California contract law,
3 indemnification provisions are presumptively interpreted as covering only third-party claims.
4 ANALYSIS
5 A. Applicable Legal Standard.
6 Under Rule 12(b)(6), a party may move to dismiss for failure to state a claim upon which
7 relief can be granted. In its pleading, a party must state “enough facts to state a claim to relief that
8 is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim has
9 “facial plausibility” if the party pleads facts that “allow[ ] the court to draw the reasonable
10 inference that [another party] is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S.
11 662, 678 (2009).
12 In resolving a 12(b)(6) motion, the Court must follow a two-pronged approach. First, the
13 Court must accept all well-pleaded factual allegations as true, but “[t]hreadbare recitals of the
14 elements of a cause of action, supported by mere conclusory statements, do not suffice.” Iqbal,
15 556 U.S. at 678. Nor must the Court “ ‘accept as true a legal conclusion couched as a factual
16 allegation.’ ” Id. at 678-80 (quoting Twombly, 550 U.S. at 555). Second, assuming the veracity of
17 well-pleaded factual allegations, the Court must “determine whether they plausibly give rise to an
18 entitlement to relief.” Id. at 679. This determination is context-specific, requiring the Court to
19 draw on its experience and common sense, but there is no plausibility “where the well-pleaded
20 facts do not permit the court to infer more than the mere possibility of misconduct.” Id.
21 B. Section 10(vi) Is Limited to Indemnification for Third-Party Claims.
22 Apple asserts that it is entitled to fees and costs under Section 10 because AliveCor’s
23 claims arise from and are related to, at least in part, AliveCor’s use of covered Apple Software or
24 Services, its Covered Products, and/or its development of apps submitted to and/or published to
25 the App Store. (Counterclaim ¶ 13; see id. Ex. A § 10(vi).) AliveCor argues that Apple’s
26 counterclaim for indemnification must be dismissed because the provision applies only to third-
27 party disputes, not intra-party disputes.
1 damage incurred by another party.” Alki Partners, LP v. DB Fund Servs., LLC, 4 Cal. App. 5th
2 574, 600 (2016) (internal citations and quotations omitted). An indemnity agreement is
3 interpreted according to the language and contents of the contract, as well as the intention of the
4 parties as indicated by the contract, using the same rules that govern the interpretation of other
5 contracts. Carr Bus. Enterprises, Inc. v. City of Chowchilla, 166 Cal. App. 4th 14, 20 (2008).
6 Courts look to several indicators to distinguish third party indemnification provisions from
7 provisions for the award of attorney fees incurred in litigation between the parties to the contract.
8 First, the “key indicator is an express reference to indemnification. A clause that contains the
9 words ‘indemnify’ and ‘hold harmless’ generally obligates the indemnitor to reimburse the
10 indemnitee for any damages the indemnitee becomes obligated to pay third persons—that is, it
11 relates to third party claims, not attorney fees incurred in a breach of contract action between the
12 parties to the indemnity agreement itself.” Alki Partners, 4 Cal. App. 5th at 600 (citing Carr, 166
13 Cal. App. 4th at 20). Here, Section 10 uses the “indemnify and hold harmless” language. This
14 language applies to each enumerated subsection including Section 10(vi), which is the subsection
15 relevant to Apple’s counterclaim.1 (See Counterclaim ¶¶ 14-17.) This indicates that Section 10
16 was intended to cover third-party claims.
17 Second, courts examine the context in which the language appears. “Generally, if the
18 surrounding provisions describe third party liability, the clause will be construed as a standard
19 third-party indemnification provision.” Alki Partners, 4 Cal. App. 5th at 600 (citing Myers Bldg.
20 Indus., Ltd v. Interface Tech., Inc., 13 Cal. App. 4th 949, 970 (1993)).
21 Review of the other subdivisions of Section 10 further suggests the provision is intended to
22 only apply to third-party claims. Several subdivisions refer to claims involving the developer’s
23 app and clearly contemplate third parties. See License Agreement § 10(ii) (applying to disputes
24 where a developer’s app “violate[s] or infringe[s] any third party intellectual property… rights”;
25 id. § 10(v) (applying to claims regarding the developer’s use of “logos, trademarks, content or
26 images” and including “any end-user claims”). Similarly, Section 10(iii) refers to the developer’s
27
1 breach of the end-user license agreement (“EULA”), which is an agreement between the developer
2 and the end-user, not between the developer and Apple.2 Ex. A § 10(iii); see also id., Schedule 1,
3 § 3.3. Section 10 also prohibits app developers from “enter[ing] into any settlement agreement
4 with a third party that affects Apple’s rights or binds Apple in any way,” which also suggests that
5 this is a third-party indemnity provision. Id. § 10. Finally, Section 10 contains no express
6 references to intra-party disputes or prevailing parties.
7 Apple’s argument that the indemnification provision applies to actions between the parties
8 is strongest with regard to Section 10(i), which requires indemnification for “breach of any
9 certification, covenant, obligation, representation or warranty in this Agreement…” Id. §10(i).
10 But even if Section 10(i) could be read to encompass claims between the parties, it does not
11 change the Court’s conclusion. Apple’s counterclaim is based on Section 10(vi); Apple does not
12 allege that AliveCor breached any certification, covenant, obligation, representation or warranty.
13 That Section 10(i) might possibly cover intra-party disputes does not mean that Section 10(vi), the
14 applicable provision here, does. Indeed, as discussed above, the express language of the
15 indemnification provision and examination of the other subdivisions strongly suggests that Section
16 10(vi) covers only third-party claims.
17 Apple does not dispute that the terms “indemnify” and “hold harmless” create a
18 presumption that an indemnification provision is limited to third-party claims, but it argues that
19 the express language of a contract can overcome this presumption. This may be true, but Section
20 10 lacks such express language. This distinguishes the present case from those which Apple cites.
21 For example, in Dream Theater, Inc. v. Dream Theater, the indemnification provision
22 expressly stated that the obligation to indemnify applied “against all losses ‘whether or not arising
23 out of third party [c]laims.’” 124 Cal. App. 4th 547, 556 (2004). Similarly, in Zalkind v.
24 Ceradyne, Inc., the agreement contained broad language requiring one party to indemnify the
25
2 Apple argues that Section 10(iii) has “no plausible reading” other than to encompass one party’s
26
breach of an obligation to the other. (Opp’n at 10.) The EULA is an agreement between the app
developer and the end-user. Thus, the language of Section 10(iii) seems to contemplate situations
27
where the developer breaches its obligations to the end-user under the EULA and the end-user
1 other for losses “‘whether or not they have arisen from or were incurred in or as a result of any
2 demand, claim, action, suit, assessment or other proceedings or any settlement or judgment…’”
3 194 Cal. App. 4th 1010, 1028 (2004). In Wilshire-Doheny Assocs. Ltd. v. Shapiro, the court found
4 the indemnification provisions applied to disputes between the parties on the contract because
5 there was “nothing in the language of any of the three indemnity provisions specifically limiting
6 their application to third party lawsuits.” 83 Cal. App. 4th 1380, 1396-97 (2000).
7 In contrast, Section 10 does not contain express language expanding its scope beyond
8 third-party claims. And unlike the provision in Wilshire-Doheny, Section 10 does contain
9 language that limits it to third-party claims, as discussed supra. Moreover, the indemnification
10 provisions in Apple’s cited cases were found to cover disputes between the parties for breach of
11 contract or enforcement of the indemnification agreements. But, as discussed above, Apple’s
12 counterclaim is not for breach of contract. Apple’s cases are distinguishable.
13 The recent decision in Epic Games, Inc. v. Apple Inc. further supports the Court’s
14 conclusion about Section 10. 559 F. Supp. 3d 898 (N.D. Cal. 2021). In Epic, Apple asserted a
15 similar counterclaim for indemnification under Section 10 of the License Agreement. Id. at 1066.
16 The court, guided by the same principles applied here, rejected Apple’s argument and determined
17 that Section 10 applied only to suits between Apple and third parties. Id. at 1066-67. The Court
18 agrees with the reasoning in Epic.3
19 Section 10 contains key indicators suggesting it applies only to claims asserted by third
20 parties and is devoid of any unambiguous reference to intra-party disputes. Accordingly, the
21 Court GRANTS AliveCor’s motion to dismiss the counterclaim. Because the Court dismisses the
22 counterclaim based on the language of the indemnification provision, the Court need not address
23 AliveCor’s other arguments related to fee-shifting in antitrust cases.
24 //
25 //
26
3 The parties in the Epic case have appealed the trial court’s judgment. See Epic Games, Inc. v.
27
Apple Inc., Nos. 21-165506, 21-16695 (9th Cir. Mar. 24, 2022). On appeal, Apple has challenged
1 CONCLUSION
2 For the foregoing reasons, the Court GRANTS AliveCor’s motion to dismiss the
3 counterclaim for indemnification. Because the Court finds Section 10(vi) applies to third party
4 claims as a matter of law, it concludes amendment would be futile and dismisses the counterclaim
5 || without leave to amend.
6 IT IS SO ORDERED.
7 || Dated: May 16, 2022 Gh
8 \ Akay .
JEFFREY p. WHIZE
9 United States District Judge
10
1]
12
13
15
16
Oo
Z 18
19
20
21
22
23
24
25
26
27
28