Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of N.J.

• Decision Date: 19 September 2012
• Docket Number: No. 08–CV–7069 (KMK).,08–CV–7069 (KMK).
• Citation: 894 F.Supp.2d 288
• Parties: ROCKLAND EXPOSITION, INC., Plaintiff, v. ALLIANCE OF AUTOMOTIVE SERVICE PROVIDERS OF NEW JERSEY, Tom Elder, Thomas Greco Publishing, Inc. and Glenn Villacari, Defendants.
• Court: U.S. District Court — Southern District of New York

894 F.Supp.2d 288

ROCKLAND EXPOSITION, INC., Plaintiff,

v.ALLIANCE OF AUTOMOTIVE SERVICE PROVIDERS OF NEW JERSEY, Tom Elder, Thomas Greco Publishing, Inc. and Glenn Villacari, Defendants.

No. 08–CV–7069 (KMK).

United States District Court,

S.D. New York.

Sept. 11, 2012.

As Amended Sept. 19, 2012.

Philip Furgang, Esq., Stephanie Furgang Adwar, Esq., Furgang & Adwar, L.L.P., New York and West Nyack, NY, for Plaintiff.

Armando Llorens, Esq., Law Offices of Armando Llorens, Suffern, NY, for Plaintiff.

Arthur M. Peslak, Esq., Mandel & Peslak, LLC, Freehold, NJ, for Defendants.

Benjamin Zelermyer, Esq., Steinberg & Cavaliere, LLP, White Plains, NY, for Defendants.

Thomas Anthony Catalano, Esq., Lester, Schwab, Katz and Dwyer LLP, New York, NY, for Defendants.

OPINION AND ORDER

KENNETH M. KARAS, District Judge.

Plaintiff Rockland Exposition, Inc. (“Plaintiff” or “REI”) brings this action against Defendants Alliance of Automotive Service Providers of New Jersey (“AASP”), Tom Elder, Thomas Greco, Thomas Greco Publishing, Inc., and Glenn Villacari (collectively, “Defendants”). Plaintiff alleges federal claims for copyright protection, trademark infringement, and trade libel and false advertising, and New York state law claims for trademark infringement, unfair competition, dilution, trade libel, misappropriation of trade secrets, tortious interference with contract, tortious interference with business relations, and breach of contract. Defendants now move for partial summary judgment to dismiss Counts Four through Eleven of Plaintiff's Amended Complaint. For the forgoing reasons, Defendants' motion is granted in part and denied in part.

I. Background

This Court has extensively described the factual background and procedural history of this case in two prior opinions. See Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of N.J. (“ Rockland I ”), Nos. 08–CV–7069, 08–CV–11107, 2009 WL 1154094, at *1–4 (S.D.N.Y. Mar. 19, 2009); Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of N.J. (“ Rockland II ”), 706 F.Supp.2d 350, 352–53 (S.D.N.Y.2009). Here, it will only highlight those facts which are relevant to the pending motion.

A. Factual Background

AASP is a non-profit organization of independent automotive collision and repair businesses (Defs.' R. 56.1 Statement of Material Facts (“Defs.' 56.1”) ¶ 1), and claims that for over thirty years, it has presented an annual trade show at which various exhibitors showcase their goods and services to AASP members and to others in the automotive collision and repair business, (id. ¶ 3).¹ AASP claims that it first began referring to its annual trade show as the “Northeast” Autobody Congress and Trade Show as early as 1985 ( id. ¶ 8), and since then has promoted its annual “Northeast” trade show through advertising and other means, ( id. ¶ 10).² REI is in the business of running trade shows, and claims that it and its predecessor and related companies have been in the business of running trade shows, mostly with an automotive theme, since 1974. (Counter Statement Under R. 56.1, Pl.'s Contentions (“Pl.'s 56.1”) ¶ 2.) Since its inception in 1983, REI has identified many of its trade shows with the mark “Northeast.” (Dep. of David McCarey (“McCarey Dep.”) 7, May 8, 2009; Pl.'s 56.1 ¶¶ 3–4); see also Rockland I, 2009 WL 1154094, at *1.

In or around 1989, AASP entered into an agreement with REI, whereby REI agreed to manage and promote an annual automotive/autobody trade show with AASP (the “Northeast Automotive Trade Show”). Rockland I, 2009 WL 1154094, at *1. Prior to its agreement with REI—from 1978 through 1989—AASP's executive director and volunteers had managed AASP's annual automotive trade show. (Aff. of Thomas R. Greco (“Greco Aff.”) ¶ 17.) The 1990 show was referred to in promotional literature as “Automotive Association of New Jersey Presents the 13th Annual ACTS '90” (Defs.' Ex. O), and in 1991, the promotional literature referred to the show as “Automotive Service Association of New Jersey Presents the 14th Annual Northeast '91 Autobody/Automotive Trade Show,” (Defs.' Ex. P). Between 1990 and 2008, REI managed the annual Northeast Automotive Trade Show, which was held in Suffern, New York. Id.

Until 2004, REI and AASP continued to enter into written agreements governing the terms of the trade show, with a two-year period on the same terms. Rockland I, 2009 WL 1154094, at *2.³ In 2004, REI and AASP entered into a contract covering the 2005 and 2006 Northeast Automotive Trade Shows. (Am. Compl. Ex. C (the “Contract”).) The Parties did not execute a new agreement in 2005 or 2006, but AASP provided REI with a $2000 deposit for each of the 2007 and 2008 Northeast Automotive Trade Shows. See Rockland I, 2009 WL 1154094, at *2. The 2004 Contract contained an automatic two-year renewal provision, which was the subject of the Court's previous rulings of March 19, 2009 and November 5, 2009.⁴ Following the March 2007 show, relations between REI and AASP began to deteriorate, largely because of AASP's concern about REI's management of the show. See Rockland I, 2009 WL 1154094, at *2. At a July 2007 meeting to discuss AASP's concern, REI gave AASP a memorandum containing suggestions for improvement for the 2009 show, and requesting a “written decision” from AASP about its willingness to participate in the 2009 and 2010 shows by March 31, 2008. (Defs.' Ex. 190); see also Rockland I, 2009 WL 1154094, at *2. AASP provided REI with the $2,000 deposit for the 2009 show and did not notify REI within 45 days of the 2007 show that it wished to terminate the agreement for the 2009 show. (Pl.'s 56.1 ¶¶ 22–23); see also Rockland I, 2009 WL 1154094, at *2 & n. 3. At a March 3, 2008 meeting, REI proposed a new arrangement to AASP for future shows, which provided for a higher deposit from AASP and contained different payment terms. Rockland I, 2009 WL 1154094, at *2. Following this meeting, REI sent a follow-up letter to AASP asking AASP to confirm (by fax or email) its willingness to participate in shows after the March 2008 show—even though the Contract bound AASP for the 2009 show—by March 31, 2008. (Defs.' Ex. 107); see also Rockland I, 2009 WL 1154094, at *2–3. The March 3, 2008 letter also stated that if “AASP/NJ decides to participate [in the Northeast Regional Autobody/Automotive Trade Show] in future years[,] they will have the first option to do so with Rockland Exposition, Inc.” (Defs.' Ex. 107.)

AASP notified REI on March 18, 2008 via telephone that it had decided not to proceed with REI on presenting a 2009 show. (Defs.' 56.1 ¶ 31.) In response, REI sent AASP a letter on March 25, 2008, informing AASP that REI “will continue to promote and manage a 2009 Northeast Regional Autobody/Automotive Trade Show (on the March 27, 28, 29, 2009 dates) ... even with the loss of the AASP/NJ sponsorship.” (Defs.' Ex. 164 (emphasis in original).) On March 27, 2008, just prior to the 2008 show, AASP, through its attorney, sent a letter to REI, notifying it in writing that “the contract has expired” and that “[y]ou have been notified that the upcoming event will be the last one held through your company for the present and foreseeable future.” (Defs.' Ex. 195); see also Rockland I, 2009 WL 1154094, at *3. Responding to REI's contention that it would hold a 2009 Northeast show without AASP, the letter stated that REI “agreed to promote, manage and operate the Northeast Regional Auto Body/Automotive Trade show [and] [t]his does not include ownership of [the] show or the name, which is clearly owned by AASP–NJ.” (Defs.' Ex. 195.) On March 31, 2008, the day after the 2008 show ended, AASP sent REI another letter, again through an attorney, this time stating that “AASP[ ] has elected to sever its business relationship with Rockland Exposition, Inc., and will not be entering into any agreements with you involving its planned 2009 Trade Show.” (Defs.' Ex. 196.) AASP also wrote that “[t]he mark Northeast Regional Autobody/Automotive Trade Show is clearly and unequivocally the property of AASP/NJ” and may not be used by REI “for any purpose.” ( Id.)

On March 26, 2008, two days before the start of the 2008 Northeast Automotive Trade Show, AASP sent a letter to the 2008 exhibitors, announcing its intent to move its 2009 Northeast Automotive Trade Show to the Meadowlands, to be held on March 20–22, 2009. (Defs.' 56.1 ¶ 35; Defs.' Ex. 21.) On April 10, 2008 REI issued a press release announcing that REI would hold a “Northeast Regional 2009 Trade Show” at Rockland Community College in March 2009. (Defs.' Ex. 197.) In small print at the bottom of the press release, REI noted that “AASP/NJ has elected to end its 20 year business relationship with Rockland Exposition/David McCarey.” ( Id.) On April 24, 2008, REI sent a deposit to Rockland Community College for its “Northeast Regional 2009 Trade Show,” listing its show dates as March 20–22, 2009. (Defs.' Ex. 106.) David McCarey (“McCarey”), REI's President, testified at his deposition that REI changed its show dates from March 27–29, 2009 to March 20–22, 2009, because he thought that having REI's show on the same dates as AASP's would help REI's show “retain exhibitors.” (McCarey Dep. 411–12, Oct. 14, 2010 (Defs.' Ex. E).)

The 2008 Northeast Automotive Trade Show had been presented by REI and AASP as the “31st Annual AASP Northeast 2008 Regional Autobody/Automotive Trade Show.” (Defs.' Ex. 170.) AASP promoted its 2009 show as the “32nd annual” Northeast 2009 Automotive Trade Show (Defs.' Ex. 167), and also held its 33rd and 34th “Annual Northeast” shows in 2010 and 2011 at the Meadowlands, (Defs.' 56.1 ¶ 46). REI promoted its 2009 Northeast show as the “20th Annual Event” and called it the “Northeast Regional Trade Show.” (Defs.' Ex. 166.) REI solicited exhibitors for its 2009 show from approximately April 2008 to February 2009. On February 19, 2009, REI announced that it would postpone its 2009 Northeast show pending the outcome of...