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Jews for Jesus   v. Steven C Brodsky
US District Court, District of NJ
(1999)

Jews for Jesus v. Steven C. Brodsky

In mid-December 1997, Steven Brodsky, a resident of West Orange, New Jersey, posted an Internet website that he used to express his opposition to the appellee organization, a non-profit Christian missionary group that targets Jews for conversion to Christianity based on the proposition that one can simultaneously be a Jew and a Christian. Mr. Brodsky named his website www.jewsforjesus.org. The limited content of his website was unequivocal in its opposition to appellee and to the concept that Jews can be "for Jesus." The main feature of the website was that it offered users the opportunity to "hyperlink," or transfer, to an unrelated website operated by an anti-missionary organization called Outreach Judaism, headed by Rabbi Tovia Singer. In late December 1997, a truthful disclaimer of affiliation with either plaintiff or Outreach Judaism was added to the display. Neither Brodsky's nor Singer's websites were or are commercial in any way.

On January 21, 1998, Jews for Jesus filed suit against Mr. Brodsky, claiming infringement of its registered mark as well as common-law trademark infringement, trademark dilution and other related claims, including that by "persuading" Internet users not to come adherents of Jews for Jesus, Mr. Brodsky was "diverting" traffic and causing plaintiff "commercial" harm. Jews for Jesus sought a temporary restraining order ("TRO") and a preliminary injunction against Mr. Brodsky's activities. In an opinion dated March 5, 1998, the District Court ruled that Mr. Brodsky had willfully infringed plaintiff's registered mark. The Third Circuit affirmed without opinion, a typical result in the case of a grant of temporary injunctive relief, regarding which District Courts are given wide discretion. Plaintiff, however, refused to settle for a permanent injunction, seeking damages and a large attorneys' fees judgment as well. Discovery ensued, and in the course of discovery plaintiff dropped its damages claim. A bench trial is expected some time in the spring. If the District Court fails to reconsider its novel rulings--including that a non-commercial defendant may be held liable for trademark dilution merely by hyperlinking to a purely expressive, non-commercial website--it is anticipated that the Third Circuit will be given the opportunity for full review of the decision.

The amended trial brief follows:


UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY


JEWS FOR JESUS,

Plaintiff,

vs.

STEVEN C. BRODSKY,

Defendant.

 

98 Civ. 274 (AJL)

 

 

 



AMENDED TRIAL BRIEF OF DEFENDANT STEVEN C. BRODSKY

PITNEY, HARDIN, KIPP & SZUCH
P.O. Box 1945
Morristown, New Jersey 07962
(973) 966-6300

Attorneys for Defendant

Steven C. Brodsky

Of Counsel:

Murray J. Laulicht (ML 4606)
Michael J. Dunne

On the Brief:

Ronald D. Coleman (RC 3875)


TABLE OF CONTENTS

PRELIMINARY STATEMENT

STATEMENT OF FACTS

LEGAL ARGUMENT

I. THIS COURT IS REQUIRED TO CONSIDER PLAINTIFF’S CLAIMS AND MR. BRODSKY’S DEFENSES DE NOVO IN THIS TRIAL

II. PLAINTIFF’S CLAIMS OF TRADEMARK DILUTION AND UNFAIR COMPETITION CANNOT SUCCEED.

A. Non-commercial speech exemption
B. News commentary exemption
C. Fair use exemption
D. Use and dilution of a famous trademark

1. Degree of Inherent or Acquired Distinctiveness
2. Tarnishment
3. Blurring

III. PLAINTIFF’S CLAIM OF FEDERAL TRADEMARK INFRINGEMENT UNDER 15 U.S.C.A. 1114 CANNOT SUCCEED.

A. Similarity
B. Strength of Mark
C. Care and attention of users; actual confusion
D. Intent
E. Fair Use

IV. PLAINTIFF’S UNFAIR COMPETITION CLAIMS CANNOT SUCCEED.

A. Section 1125(a)(1)(A)
B. Section 1125(a)(1)(B)

V. PLAINTIFF IS NOT ENTITLED TO ATTORNEYS’ FEES.

A. Failure to Designate Mark as Registered
B. Waiver and Estoppel by Plaintiff
C. Estoppel Relating to InterNIC Claim
D. First Amendment

CONCLUSION

EXHIBIT A (Public Works Journal Corp. v. Public Works Online, Inc., et al., No. 97-1218 (JAG) (June 30, 1998)


PRELIMINARY STATEMENT

Plaintiff calls itself Jews for Jesus because, it says, it consists of Jews for Jesus. Defendant Steven Brodsky is a Jew who is not for Jesus. To express his opinion about Jews for Jesus, Mr. Brodsky posted an Internet website, naming it with an apt description: "Jews for Jesus?," using the available Internet address of jewsforjesus.org.

Plaintiff has a registered stylized trademark, JEWS FY R JESUS, and in this litigation has claimed common law rights in the words Jews for Jesus as well. Plaintiff has, however, used the words Jews for Jesus (without the Star of David) generically for years. Plaintiff sued to stop Mr. Brodsky from using the words Jews for Jesus in his Internet address.

In this trademark dispute, few facts are in dispute. A number of legal questions need to be answered definitively, however. One is whether plaintiff has a monopoly, borne of the common law, in the use of its admittedly generic self-description, Jews for Jesus [1]. The second is whether this Court will rule, contrary to all prior authority, that the registration privileges granted a stylized trademark may be extended to its unstylized form, which here amounts to generic words or at best what this Court has deemed a descriptive phrase. The answer to both questions should be no. Where a party has repeatedly used a phrase generically and has testified that the phrase may be used generically, all the ersatz secondary meaning in the world will not save that phrase from being generic. And registration of a stylized version of that generic phrase cannot render the phrase protectible in its unstylized form. Without the stylized device on which grant of the registration is based, the unstylized form remains generic and unprotectible.

It should not be necessary for this Court to go beyond these basic trademark principles. If it does, though, the next critical question concerns the antidilution statute, under which plaintiff also demands relief: How could Mr. Brodsky have made "commercial" use of these trademarks where under every legal definition of "commercial" speech (a necessary element of dilution), his website could never constitute "commercial use"?

If the Court nonetheless disregards controlling authority and (1) ignores plaintiff’s own generic use of the alleged "common law mark," (2) finds infringement of a stylized mark by use of unstylized elements, and (3) finds commercial speech where a commercial transaction is not even proposed, it will then be faced with another issue: The fact that the courts have consistently counseled against expanding trademark law beyond its recognized bounds because doing so limits speech in contravention of the First Amendment. Upon full consideration of the record and the analysis that Mr. Brodsky has now had the opportunity to compile, it is submitted that this Court will find that it is not appropriate to do so, and will not grant a verdict for plaintiff.

In the event, however, that this Court is not persuaded to follow the clear authority on these propositions set out by Mr. Brodsky below, the Court must address the issue of attorneys’ fees. The Court must ask itself, again, two questions: (1) Whether the conduct of litigation for the sole purpose of achieving an attorneys’ fees judgment is a policy, regardless of whether it is legal, that this Court wants to encourage. (2) Whether the "strong showing of wrongful infringement" necessary to award attorneys’ fees is shown here, based on the complete record developed during discovery.

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[1] Many facts relating to plaintiff’s admission of its own generic use and its extensive generic use were not before the Court at the preliminary injunction stage, but were developed in discovery.

1


Given all that has been set forth above, Mr. Brodsky’s good faith interpretation of the law that, as demonstrated below, favored his position was eminently reasonable. Plaintiff’s vague, contradictory and cynical communications on the eve of the litigation as to what exactly its mark or marks were, made willfulness by Mr. Brodsky impossible as a matter of fact.

In a similar vein, plaintiff’s assertion of the Internet’s quasi-official InterNIC standards to support its claim, followed by its sub rosa retreat from those standards, can hardly be placed at Mr. Brodsky’s doorstep. For that matter, plaintiff should not be rewarded for its policy of never truthfully indicating to the public that its mark was registered (much less for untruthfully claiming that it was, at a time when it was not!). Considering these factors, the rare "special circumstances" that permit the extreme sanction of attorneys’ fees on willful trademark infringers cannot be found here.

As stated before, plaintiff says it is made up of Jews for Jesus. They preach as Christians that an offended person should turn the other cheek. Plaintiff’s founder has written:

We want to stay near those who choose to cause us pain and who would slap us out of their presence. Our objective is to demonstrate we have the strength to endure an assault without anger . . . and that we have the power to forgive.

M. Rosen, Jews for Jesus (1974) at 93. But, though it claims "misrepresentation," plaintiff itself does not practice as it preaches. This extended litigation is the product merely of a thirst for revenge – revenge, ironically, for an act that has resulted in an unprecedented increase in website traffic and press attention for a publicity-hungry plaintiff.

This Court must take a fresh look at the new analysis, new authority and new evidence set forth in this brief. These demonstrate that, not only plaintiff’s claim for attorneys’ fees, but all of plaintiff’s claims are without legal merit.

STATEMENT OF FACTS [2]

Plaintiff describes itself, and Jews that agree with it, as Jews for Jesus, i.e., people who are Jews for Jesus. Some of these Jews for Jesus are organized under California law in a "ministry" in San Francisco. Plaintiff’s corporate form is not in the record, but significantly it is not a membership organization: A person cannot be a "member" of plaintiff’s ministry or organization and thereby become "a Jews for Jesus" the way a person can be "a Mason" or "a Girl Scout."

Rather, in plaintiff’s usage, being a Jew for Jesus means simply that. Thus, plaintiff maintains that, in contrast to its own self-described "movement" of Jews for Jesus (organized in 1973), "the original Jews for Jesus date back to apostolic times." Plaintiff has asserted in writing and in testimony that the phrase Jews for Jesus can be used as a generic term, and indeed has over the years used it generically in newspaper advertisements, Internet postings, published articles, its "broadsides" (Gospel handouts), as well as in deposition testimony in this case. Plaintiff has also used variants of this generic phrase in its various publications and promotions. Plaintiff’s own founder has admitted that Jews for Jesus is "a movement, not an organization." Rosen at 75.

------------------------------

[2] All facts set forth in this brief are taken from the Proposed Findings of Fact and Conclusions of Law included in the Final Pretrial Statement of Defendant, which contains specific citations to the record, or the Amended Complaint, except where noted.

2


Not surprisingly, given this generic use, plaintiff has never registered, nor attempted to register, the words Jews for Jesus with the United States Patent and Trademark Office (the "PTO"). The decision not to apply for registration of Jews for Jesus was apparently made on the advice of counsel, and presumably because of the recognition that the phrase Jews for Jesus is generic and not legally protectible.

Plaintiff does hold a registered trademark, however. It has stated in its Amended Complaint (and to the PTO) that the trademark it holds, and the one most relevant to this case, is a "stylized" service mark [3]. That mark, which incorporates the descriptive words Jews for Jesus and the Star of David, is rendered as JEWS FY R JESUS. The PTO registration statement for this mark explicitly disclaims the words "Jews," "Jesus" and the Star of David, "except for the mark as shown." Plaintiff actually published the mark along with the symbol provided by 15 U.S.C.A. 1111 to put the public on notice that a trademark was registered — but the evidence will show that it did so only before 1983, even stating in its publications, falsely, that the mark was registered. Yet at no time before this litigation was filed did plaintiff ever truthfully (after registration) use the symbol with its mark, or otherwise indicate the registered status of this mark in its publications or on the Internet. And only after suing Steven Brodsky did plaintiff publicly assert common law rights to Jews for Jesus on its Internet web page.

Plaintiff had, at all times relevant to this action, an Internet website with the Universal Resource Locator ("URL") "jews-for-jesus.org"; thus, an Internet user would only reach plaintiff’s website at that URL. Prior to this litigation, inputting "jewsforjesus.org" would not and could not have taken a user to plaintiff’s website.

Defendant Steven Brodsky resides in West Orange, New Jersey. He attended law school, though he never studied trademark law, intellectual property law, or the law of the Internet. Mr. Brodsky, whose professional work involves the Internet, posted an Internet website in late 1997 on which he stated his opposition to plaintiff’s missionary activities aimed at Jews. He chose the domain name "jewsforjesus.org" because he wished to select a domain name that most closely matched the subject matter on which he wanted to comment at his website. There is no dispute but that the topic of Mr. Brodsky’s website was in fact Jews for Jesus. The actual title of the website, as admitted by plaintiff, is not Jews for Jesus but rather the inquisitive, "Jews for Jesus?"

------------------------------

[3] Although this accurate characterization of the mark as stylized appears in paragraph 14 of plaintiff’s own Amended Complaint and in the relevant trademark registration, plaintiff has nonetheless denied its own allegation and claims that the trademark is not stylized. Plaintiff’s Responses to Defendant’s Request for Admissions, Admission No. 2. Nowhere in its pleadings is the plaintiff’s new favored term, "composite mark," found. JEWS FY R JESUS is not a composite mark consisting of separable word and design components. Despite its repeated claim that the Star of David is "overlaid" on the letter "O" in "FOR," simple observation reveals that there is no letter "O" in the mark at all. That is why this Court ruled on the preliminary injunction application that the mark was stylized. Moreover, even if plaintiff’s mark is a composite mark, it is still stylized and is not entitled to protection because it is a combination of generic terms that are merely descriptive. See, In re Copytele Inc., 31 U.S.P.Q.2d 1540, 1542 (T.T.A.B. 1994).

3


Besides a brief statement of opposition to plaintiff’s activities, Mr. Brodsky offered Internet users a "hyperlink," at which, by the click of a mouse, they could view the Internet website of Rabbi Tovia Singer’s "Outreach Judaism" organization. This charitable, not-for-profit corporation is engaged in activities aimed at educating Jews about Jews for Jesus, regardless of what group these Jews for Jesus are part. Rabbi Singer has testified that, in his experience as an anti-missionary rabbi and educator, the term Jews for Jesus is routinely used generically by the public to describe Jews who become involved in missionary groups such as plaintiff.

The Outreach Judaism website, inter alia, advertises the sale of goods that do not contain any alleged mark of plaintiff. These goods, audio tapes of Rabbi Singer’s lectures mainly, are sold solely to support Outreach Judaism’s religious and educational mission. These sales account for less than half of Outreach Judaism’s income.

Steven Brodsky is and has always been independent of Outreach Judaism and Rabbi Singer, though Mr. Brodsky donated time to assist Rabbi Singer with Outreach Judaism’s website. There is no evidence that Steven Brodsky has ever received anything of value from Rabbi Singer (or from anyone else) in connection with his website or that they had any other connection. Rabbi Singer asked Mr. Brodsky, shortly after the "jewsforjesus.org" website was posted, to add a disclaimer of affiliation with Outreach Judaism, which Mr. Brodsky did. Mr. Brodsky also added an explicit disclaimer of affiliation with plaintiff before this lawsuit was filed. Both disclaimers were part of the same one-web-page screen containing Mr. Brodsky’s message, the hyperlink to Outreach Judaism, and an e-mail address to contact Mr. Brodsky.

Mr. Brodsky posted a number of messages on electronic bulletin boards concerning his website. These bulletin boards consist of "threads" of successive messages and responses that users can monitor and respond to, over time. One can download or print a portion of a bulletin board posting without also downloading the message or messages to which that posting was a response. There is no evidence in the record regarding the postings to which Mr. Brodsky’s own messages were responses, or the phraseology used by those postings.

There is also no evidence that, during the time Mr. Brodsky operated his website at "jewsforjesus.org," Mr. Brodsky’s operation of his website had any effect on the actual accessibility of plaintiff’s website at "jews-for-jesus.org." There is no evidence that any Internet user was unable to gain access to plaintiff’s website as a result of Mr. Brodsky’s actions. In fact, the evidence will demonstrate that "traffic" to plaintiff’s website hit an all-time high and remained higher than before, after Mr. Brodsky posted his website.

On December 23, 1997, in-house counsel for plaintiff wrote to Mr. Brodsky by e-mail and regular mail. The hard-copy letter, bearing the JEWS FY R JESUS mark in its letterhead (but no "") claimed that Mr. Brodsky’s actions violated plaintiff’s legal rights as holder of "the trademark ‘Jews FY r Jesus’" [sic]. In electronic mail form, this was written as "Jews FAr Jesus" [sic], the capital letter "A" apparently standing in for the Star of David device. Mr. Brodsky assumed reasonably that the sender, an attorney, chose the type characters in these letters quite intentionally. No mention was made in this letter of a common law mark in the words Jews for Jesus. For that matter, neither was Mr. Brodsky informed that any mark referred to in the letter was a registered trademark.

Finally, and significantly, the letter explicitly stated that it was meant to constitute notice "[p]ursuant to the Domain Name Dispute Policy promulgated by Network Solutions, Inc.," which internally governed Internet domain names ("InterNIC"). This led Mr. Brodsky to assume, reasonably again, that InterNIC rules, which require an exact match between a registered trademark and a domain name, would govern this dispute.

4


On receipt of this letter, Mr. Brodsky went to plaintiff’s website. The only form of the trademark he saw on the home page of plaintiff’s website was JEWS FY R JESUS — the stylized form. The website contained no reservation of trademark rights of any sort. He responded by electronic mail that same day, observing that there were "numerous and substantial differences" between "jewsforjesus.org" and JEWS FY R JESUS and referring back to the InterNIC policy supposedly relied on in plaintiff’s letter. Given the obvious differences between the stylized mark and the words Jews for Jesus, and the lack of even so much as a claim of a common law mark either in its letter or at its website, Mr. Brodsky believed his actions were permissible.

Counsel for plaintiff responded in turn to Mr. Brodsky also by electronic mail, simply stating that Mr. Brodsky’s "statement that ‘numerous and substantial’ differences is contested." Plaintiff’s counsel did not explain why it "contested" Mr. Brodsky’s analysis, however. Plaintiff’s counsel did not state that it had a registered stylized trademark and that it regarded his domain name as confusingly similar to that mark. Plaintiff’s counsel did not state that it claimed a common law mark in the words Jews for Jesus. In fact, for all Mr. Brodsky could tell, plaintiff’s counsel had attempted merely to prevent him from effectively communicating a message of disagreement with plaintiff. This impression was reinforced as weeks passed without any clarification from plaintiff of why it "contested" his simple and effective retort to plaintiff’s claim.

On January 16, 1998, plaintiff’s counsel sent another letter to Mr. Brodsky. It again threatened legal action, but it did not at all address Mr. Brodsky’s statement about the distinctions between the JEWS FY R JESUS mark, the subject of the first letter from plaintiff, and his domain name. Neither did it explain why plaintiff disagreed with Mr. Brodsky’s analysis of InterNIC policy. In fact, it as much as conceded that analysis, as no mention was ever made by plaintiff of InterNIC again.

Plaintiff’s letter ignored the earlier InterNIC claims, referring Mr. Brodsky to Planned Parenthood, an unpublished opinion in the Southern District of New York. Mr. Brodsky quickly discerned that in that case, (i) unlike here, there was no stylized trademark at issue, and (ii) the website content was deceptive, whereas Mr. Brodsky’s website contained a clear disclaimer and could not be mistaken for that of plaintiff.

There was no reference in the January 16th letter to a common law trademark in the words Jews for Jesus, which Mr. Brodsky believed to be generic anyway. Mr. Brodsky also believed that the letter’s claim that he was "diverting" Internet users from plaintiff’s website was fanciful, because there was no way to prevent users from gaining the same access to plaintiff’s website as they could before he posted his site.

Furthermore, Mr. Brodsky believed, correctly, that what plaintiff feared was that his website could actually affect people’s thinking, not Internet traffic. Plaintiff’s December 16th letter admitted that, from plaintiff’s point of view, Mr. Brodsky’s "offense" was to cause the imagined "diversion" "in the hopes of convincing [Internet users] not to consider the message of Jews for Jesus . . ." and "attempt[ing] to offer them anti-Jews for Jesus material" (emphases added). Mr. Brodsky knew enough law to recognize that as an American citizen, he had a First Amendment right to "convinc[e]" people and "attempt[] to offer them . . . material" that disagreed with or even offended plaintiff.

Finally, the January 16th letter made much of the fact that plaintiff would seek attorneys’ fees in this action. Mr. Brodsky believed this was merely an attempt to intimidate Mr. Brodsky. Because he believed he had a legal right to do what he was doing, he would not back down.

5


Based on the preliminary record before it, including the defendant’s brief prepared on short notice solely in opposition to plaintiff’s request for a temporary restraining order, this Court granted plaintiff a preliminary injunction pursuant to an Order dated March 6, 1998. On July 2, 1998, the Third Circuit affirmed the Order without opinion.

LEGAL ARGUMENT

I. THIS COURT IS REQUIRED TO CONSIDER PLAINTIFF’S CLAIMS AND MR. BRODSKY’S DEFENSES DE NOVO IN THIS TRIAL.

The United States Supreme Court has stated:

The purpose of a preliminary injunction is merely to preserve the relative positions of the parties until a trial on the merits can be held. Given this limited purpose, and given the haste that is often necessary if those positions are to be preserved, a preliminary injunction is customarily granted on the basis of procedures that are less formal and evidence that is less complete than in a trial on the merits. A party thus is not required to prove his case in full at a preliminary-injunction hearing, and the findings of fact and conclusions of law made by a court granting a preliminary injunction are not binding at trial on the merits.

University of Texas v. Camenisch, 451 U.S. 390, 395, (1981)(citations and internal quotations omitted).

Mr. Brodsky has, in the last year, taken discovery regarding plaintiff’s claims. The events leading up to the granting of the preliminary injunction, from plaintiff’s use of its alleged marks through its vague and inconsistent cease and desist letters, can now be put before the Court and placed in perspective. This Court must carefully consider the evidence Mr. Brodsky will introduce at trial in his defense regardless of its prior ruling on the merits of plaintiff’s claims or on willfulness, and with consideration of those defenses asserted in his answer which could not be developed at the time of the injunction hearing.

II. PLAINTIFF’S CLAIMS OF TRADEMARK DILUTION AND UNFAIR COMPETITION CANNOT SUCCEED.

Plaintiff’s claims under the federal and New Jersey trademark dilution laws cannot succeed because these laws explicitly exempt non-commercial speech such as defendant Steven Brodsky’s, as well as news commentary and fair use — i.e., descriptive use — of a trademark. Each of these exemptions would apply even if plaintiff could demonstrate that Mr. Brodsky used its trademark. As demonstrated below, however, plaintiff also will not be able to make out a sufficient basic trademark case to prevail under these provisions at trial, and its antidilution claims will fail for this reason as well.

A. Non-commercial speech exemption

Noncommercial speech is explicitly exempted from the federal antidilution statute, 15 U.S.C.A. 1125(c)(4):

The following shall not be actionable under this section:

. . .

(B) Noncommercial use of a mark.

. . .

N.J.S.A. 56:3-13.20 is the state-law equivalent of 1125(c). Jews for Jesus v. Brodsky, 993 F. Supp. 282, 311 (D.N.J.), aff’d without opinion, 159 F.3d 1351 (3d Cir. 1998).

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