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EP Henry Corp. v. Cambridge Pavers, Inc.

United States District Court, D. New Jersey

December 9, 2019

EP HENRY CORPORATION, Plaintiff,
v.
CAMBRIDGE PAVERS, INC., Defendant.

          OPINION

          JOSEPH H. RODRIGUEZ, UNITED STATES DISTRICT JUDGE

         These matters come before the Court on Defendant Cambridge Pavers, Inc.'s Motion (Docket Item 62) for Summary Judgment and the parties' Joint Motion (Docket Item 82) to Seal various documents. For the reasons stated below, the Court will deny Defendants' Motion (Docket Item 62) for Summary Judgment and grant in part and conditionally deny in part the parties' Joint Motion (Docket Item 82) to Seal.

         I. Factual and Procedural History[1]

         Plaintiff EP Henry Corporation (“EP Henry”) and Defendant Cambridge Pavers, Inc. (“Cambridge”) are New Jersey-based competitors in the industry of manufacturing concrete paving stones. EP Henry was formed in 1903 and Cambridge in 1995. In its advertising, Cambridge has used such phrases as “always look like new, ” “look like new forever, ” “color will never fade, ” and “skid and slip resistant.” EP Henry alleges that those phrases, among others, constitute false advertising under the Lanham Act. (See Docket Item 70-1, ¶ 14.)

         At some point in time, Cambridge began to use a jingle as part of its advertising efforts. The jingle ends with the phrase “they'll always look like new.”[2] Cambridge alleges that it began using the phrase “They'll Look Like New Forever” in its advertising for its ArmorTec pavingstone products around 2000, and that it began to use language stating that the pavingstones' color would not fade around 2004. (Docket Item 63, ¶¶ 16-17.) Then, in 2006, Cambridge registered 2 trademarks. The first consisted of Cambridge's logo and the slogan “They'll Look Like New Forever, ” while the second consisted of Cambridge's logo with the slogan “They'll Look Like New Forever” and the words “with ArmorTec.” (See Docket Item 63, ¶ 18.) According to the Trademark Registration Certificates from the U.S. Patent and Trademark Office, the two logos had been in use since the year 2000.

         Cambridge alleges that it used those slogans for marketing purposes for more than 15 years prior to EP Henry filing the present suit in 2017. (Id. ¶ 20.) It also claims that it used language including “the rich color” and “will never fade” when advertising about ArmorTec pavingstones between 2004 and 2014. (Id. ¶ 21.) Finally, Cambridge alleges that beginning around 2009, it started including in its advertising language such as “skid-resistant” and “skid and slip resistant” when describing the ArmorTec pavingstones. (Id. ¶ 22.)

         Cambridge alleges that at some point in late 2008 into early 2009, some of Cambridge's competitors, including Grinnell and Concrete Stone & Tile Corp. (“CST”), planned a meeting to discuss whether the above-mentioned language in Cambridge's marketing and advertising constituted false advertising. (Id. ¶¶ 23-25.) Cambridge claims that the meeting took place in April 2009 at Grinnell's offices, and that approximately 20-25 representatives from EP Henry, Capitol Pavers & Retaining Walls, Inc. (“Capitol”), Unilock New York, Inc. (“Unilock”), Techo-Bloc, Inc., CST, Grinnell, and Daron Northeast Inc. were all in attendance. (Id. ¶¶ 26-29.) The meeting apparently lasted approximately 60 to 90 minutes, with the attendees discussing the potentially “exaggerated advertising statements” that Cambridge had been using. (Id. ¶¶ 30-35.) Cambridge asserts that the attendees discussed the possibility of filing a lawsuit against Cambridge, but ultimately decided to table the issue until a second meeting. (Id. ¶ 34.)

         Cambridge alleges that, before the second meeting, EP Henry expressed to a CST representative that it did not want to partake in the lawsuit. (Id. ¶ 36.) Cambridge claims that there was then a second meeting, approximately 3 to 4 weeks after the first one, in which the four competitors in attendance (Capitol, Grinnell, CST, and Unilock) decided against filing a lawsuit and in favor of instituting a proceeding before the National Advertising Division (“NAD”) of the Council of Better Business Bureaus, Inc. (Id. ¶ 38-41.) In early June 2009, the attorney representing those four competitors filed a letter with NAD challenging some of the above-mentioned advertising claims made by Cambridge. (See id. ¶ 42.)[3]

         EP Henry denies that any of its representatives were present at the April 2009 meeting. (Docket Item 70-2, ¶ 6.) The parties agree that EP Henry was not one of the parties that filed the NAD case in 2009. Instead, EP Henry contends that it did not know about Cambridge's use of the alleged false advertising claims until EP Henry opened its distribution facility in Roxbury, New Jersey, in the summer of 2013. (Id. ¶ 10.) EP Henry states that the Roxbury facility represented its expansion into the North Jersey market, where Cambridge had a strong presence. (See id. ¶¶ 11, 16.) Upon opening that facility, EP Henry claims that North Jersey customers began to ask for Cambridge's ArmorTec products, citing Cambridge's advertising claims such as “they look like new forever” and “they would never fade.” (Id. ¶ 14.) EP Henry claims that, prior to opening the Roxbury facility, it had been unaware of Cambridge's alleged false advertising claims because it had not encountered Cambridge directly in the marketplace, and thus had not been affected by the claims. (Id. ¶ 16.) Upon hearing customers' requests, though, EP Henry claims it launched an investigation into Cambridge's alleged false advertising claims. (Id. ¶ 17.) EP Henry contends that it was only at this point in time that it became aware of the details of the 2009 NAD case and, more generally, the alleged false advertising claims. (Id.)

         In April 2014, EP Henry states that it submitted its own claim to the NAD to challenge Cambridge's continued use of the advertising claims “They'll Always Look Like New” and “Will Never Fade.” (Id. ¶ 19.) The NAD issued a compliance report on July 7, 2014, which deemed Cambridge's advertising claims to be “unsupported” and took umbrage with Cambridge's continued use of the phrases. (See id. ¶¶ 20-22.) EP Henry claims that, nevertheless, Cambridge continued to use the unsupported language, at which point EP Henry created and distributed a brochure entitled “The Truth About Pavers: Cambridge Pavingstones with ArmorTec Exaggerations.” (Id. ¶ 24.) EP Henry says it shared this brochure with market actors in order to inform the industry about Cambridge's alleged false advertising claims. (Id. ¶ 25.) In that brochure, EP Henry stated that Cambridge's use of the language at issue had been contested since 2009, in reference to the 2009 NAD case. (Id. ¶ 26.) Despite these efforts, EP Henry alleges that Cambridge did not discontinue using the alleged false advertising claims. (Id. ¶ 27.)[4]

         Therefore, EP Henry commenced this litigation on January 13, 2017, by filing in Gloucester County Superior Court a seven-count complaint against Cambridge that included allegations that Cambridge had violated Section 43(a) of the Lanham Act by engaging in false advertising. (Docket Item 63, ¶ 7.) On March 7, 2017, Cambridge removed the case to this Court. (Docket Item 1.) On March 24, 2017, Cambridge filed a Motion (Docket Item 8) to Dismiss EP Henry's Complaint. On October 31, 2017, the late Honorable Jerome B. Simandle granted that Motion in part and denied it in part, ultimately dismissing all of the counts other than the Lanham Act count. (Docket Items 21, 22.)

         Thereafter, Cambridge filed its Answer (Docket Item 26) to EP Henry's Complaint, in which Cambridge raised the affirmative defense of laches and counterclaimed that EP Henry had also violated the Lanham Act. On August 9, 2018, EP Henry filed its First Amended Complaint (Docket Item 50), which set forth a single count alleging false advertising in violation of the Lanham Act. On August 22, 2018, Cambridge filed its Answer (Docket Item 51) to the First Amended Complaint, again raising laches as an affirmative defense.

         On April 18, 2019, Cambridge filed a Motion (Docket Item 62) for Summary Judgment. On June 10, 2019, [5] EP Henry timely filed its Response. (Docket Item 70.) On July 8, 2019, Cambridge timely filed its Reply. (Docket Item 75.) Finally, on July 25, 2019, the parties filed a Joint Motion (Docket Item 82) to Seal the following documents, some in full and others in part: (1) Cambridge's Statement of Material Facts Not in Dispute (Docket Item 63); (2) Declaration of Charles H. Gamarekian (Docket Item 63-1); (3) Exhibit B to the Declaration of Charles H. Gamarekian (Docket Item 63-2); (4) Exhibit 7 to the Declaration of Melissa E. Flax (Docket Item 63-3); (5) Cambridge's Brief in Support of its Motion for Summary Judgment (Docket Item 63-4); (6) Cambridge's Reply Brief (Docket Item 75); (7) Exhibits A, H, and I to the Reply Declaration of Melissa E. Flax (Docket Item 75-1, 75-2, and 75-3); (8) Corrected Declaration of Charles H. Gamarekian (Docket Item 78); and (9) Exhibit B to the Corrected Declaration of Charles H. Gamareikian (Id.). The Court will address the two Motions in turn.

         II. Discussion

         The Court will first analyze Cambridge's Motion for Summary Judgment, before turning to the ...


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