Jews for Jesus v. Steven C. Brodsky
The only appropriate test of whether
speech is commercial is whether or not the sole purpose of the expression is to
communicate the "proposal of a commercial transaction." Cincinnati v.
Discovery Network, Inc., 507 U.S. 410, 422-23 (1993). Communication of information,
expression of opinion, recitation of grievances are all deserving of constitutional
protection, and are not commerce. New York Times Co. v. Sullivan, 376 U.S. 254, 267
(1964). Mr. Brodskys website did no more than communicate information, express an
opinion, recite grievances. He did not propose a commercial transaction, and he is
therefore exempt from all antidilution provisions.
It has been suggested, however, that Mr. Brodsky has somehow made his
site commercial by offering Internet users a hyperlink to Outreach Judaism. This novel
calculus assumes two premises: (1) that, Outreach Judaisms website is commercial,
and (2) that a hyperlink to an unaffiliated website invests the linking site with some of
the characteristics of the site to which it is linked. Both premises are legally without
As to the first of these premises, Outreach Judaism is not a commercial
website and its speech is not commercial. While it raises funds, that is not its primary
purpose. The law is clear that information or expression is not transformed into
commercial speech even if money is involved in the process of disseminating it. Cardtoons,
L.C. v. Major League Baseball Players Assn., 95 F.3d 959, 970 (10th Cir. 1996)
(citing Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, 425
U.S. 748, 761 (1976)). For that matter, it is well established that charitable fundraising
is not commercial speech, even if it is factually a hybrid of commercial and noncommercial
speech. Riley v. National Fedn of the Blind, 487 U.S. 781 (1988); Cincinnati
v. Discovery Network, Inc., supra; Village of Schaumberg v. Citizens for a Better
Envt, 444 U.S. 620 (1980); Gordon & Breach Science Publishers S.A. v.
American Inst. of Physics, 859 F. Supp. 1521, 1540 (S.D.N.Y. 1994). It is undisputed
that the only purpose of Outreach Judaisms fundraising was sustaining its
non-profit, religious, educational mission. Thus its website could not constitute
commercial speech under Supreme Court authority.
Secondly, even if Outreach Judaism were a commercial website, which it
is not, there is no authority for the proposition that linking to a commercial website
makes the linking website commercial as well .
Finally, in its preliminary opinion this Court relied on the holding in Planned
Parenthood Fedn of Am. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y.), affd
unpublished table decision, 152 F.3d 920 (2d Cir.), cert. denied, 119 S.Ct. 90
(1998), that "an intent to harm" a "competitor" is a basis for finding
commercial speech under this statute. But the Planned Parenthood courts
holding in this regard is based on no authority whatsoever, is contrary to the Supreme
Court authority cited above that defines commercial speech in the narrowest of terms,
distorts the word "commercial" beyond any recognition, and makes a religious
opponent a commercial "competitor" contrary to common sense, the statute and the
With the full record before the Court in this trial on the
merits, there is no need to adopt invented applications for well-established legal
concepts. The antidilution laws simply do not apply to Mr. Brodskys activities.
 Plaintiffs own website contains numerous links
to all sorts of websites including that of the Jerusalem Post and the Yahoo
indexing systems Judaism index page, as well as other non-Jews for Jesus Jewish
resources that implicate all sorts of interests, policies and activities that
plaintiff does not endorse or adopt.
B. News commentary exemption
Besides non-commercial speech, news commentary is also exempted from
the federal dilution statute by 15 U.S.C.A. § 1125(c)(4) . The statutes
language, exempting "all forms" of news commentary, suggests the sweeping
breadth of its application. Editorial comment, political advertising, and other
constitutionally protected material are not banned by the antidilution laws. Remarks of
Rep. Kastenmeier, 134 Cong. Rec. H10419 (daily ed., October 19, 1988). See Wojnarowicz
v. American Family Ass'n, 745 F. Supp. 130, 141-42 (S.D.N.Y. 1990). Even Professor J.
Thomas McCarthy, the foremost expert on trademark law, has stated that "The statute
does not apply to allegedly tasteless or nasty modifications of famous marks in the media
. . . Internet home pages, and the like." J. McCarthy, "The 1996 Federal
Anti-Dilution Statute," 16 Cardozo Arts & Ent. L.J. 587, 599 (1998).
The non-commercial and news commentary exemptions are closely linked.
Thus, it has been held that the use of a trademark is not actionable where such use, even
if dilutive, is part of a commentary on an issue of public importance. Dr. Seuss
Enter., L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559 (S.D. Cal.), affd,
109 F.3d 1394 (9th Cir.), cert. dismissed, 118 S. Ct. 27 (1997); see, American
Civil Liberties Union v. Miller, 977 F. Supp. 1228, 1233 (N.D. Ga. 1997)(state
Internet trademark statute unconstitutional). Indeed, even trademark use that would be
commercial will be rendered noncommercial and protected if, as here, its purpose is
commentary about the markholder. Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397,
403 n.8 (8th Cir. 1987).
Mr. Brodskys purpose was to comment on the alleged markholder
itself regarding an issue plaintiff admits is one of public importance. Thus, §
1125(c)(4) exempts Mr. Brodsky from sanction for dilution.
C. Fair use exemption
Finally, fair use of a trademark is exempted by 15 U.S.C.A. §
1125(c)(4), which reads:
The following shall not be actionable under this section:
(A) Fair use of a famous mark by another person in comparative
advertising or promotion to identify the competing goods or services of the owner of the
famous mark. . . .
Although trademark rights may be acquired in a word or image with
descriptive qualities, the acquisition of such rights will not prevent others from using
the word or image in good faith in its descriptive sense, and not as a trademark. Car-Freshner
Corporation v. S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (2d Cir. 1995)(cited
with approval by Cosmetically Sealed Indus., Inc., v. Chesebrough-Ponds USA Co.,
125 F.3d 28 (2d Cir. 1997)). Accord, Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 12-13 (2d Cir. 1976); Sunmark, Inc. v. Ocean Spray
Cranberries, Inc., 64 F.3d 1055, 1058 (7th Cir. 1995); United States Shoe Corp. v.
Brown Group, Inc., 740 F. Supp. 196, 198-99 (S.D.N.Y. 1990); Holzwarth v. Hulse,
14 N.Y.S.2d 181, 181 (Sup. Ct. 1939); Johnson & Johnson v. Seabury & Johnson,
71 N.J. Eq. 750, 67 A. 36, 38 (N.J. 1907).
 15 U.S.C.A. § 1125(c)(4) reads: "The following shall not be actionable under
this section: ... (C) All forms of news reporting and news commentary"
In considering whether a trademark use is a fair use, "What
matters is whether the defendant is using the protected word or image descriptively, and
not as a mark." Car Freshner, 70 F.3d at 269; accord, Mattel, Inc.
v. Azrak-Hamway Int'l, Inc., 724 F.2d 357, 361 (2d Cir. 1983). A finding of bad faith
will not overcome a meritorious defense of fair use. Car Freshner, 70 F.3d at 270.
And, where, as here, a mark is generic or descriptive, an infringement claim is
particularly amenable to a defense of fair use. See, Playboy Ent. Inc. v. Welles,
47 U.S.P.Q.2d 1186, 1190 (S.D. Cal. 1998).
These principles have been applied to the Internet. A website does not
infringe the trademark of another where it uses the trademark descriptively and,
significantly, the web page content is clear that no affiliation is intended. Teletech
Customer Care Management, Inc. v. Tele-Tech Co., Inc., 977 F. Supp. 1407, 1414 (C.D.
Ca. 1997)(domain name not confusing when placed in context of website content); Playboy
Ent. Inc., supra. Here it is undisputed that the topic of Mr. Brodskys
website was Jews for Jesus, so his domain name is a fair description of content. It is
also clear that Mr. Brodsky did not pass his website off as that of a Jews for Jesus group
such as plaintiff, and thus his was not a "trademark use." See, Playboy
Ent. Inc., supra. Thus, if Mr. Brodsky is to be regarded as a "competitor"
of plaintiff at all , his use of the domain name "jewsforjesus.org" was a
fair competitive use, exempted from the antidilution statutes.
D. Use and
dilution of a famous trademark
In order to demonstrate trademark dilution, the proponent of a
trademark must demonstrate that the mark is protectible and famous. This is done by
reference to criteria set out in the statutes, each factor of which is considered here seriatim.
1. Degree of Inherent or
The Registered Mark. Plaintiff has a registered
stylized mark, JEWS FY
R JESUS. This mark is admittedly distinctive, in its stylized format. But Mr.
Brodsky did not use this mark. It has now been determined by a federal appellate court
that a registered stylized mark is not infringed by the use in a domain name of a
non-stylized version of the words making up the plaintiffs stylized mark. Data
Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 623-24 (6th Cir. 1998). The Data
Concepts decision applies to the Internet the established principle that a registered
mark consisting of a descriptive term in distinctive type style is not the equivalent of
that term in a different lettering style. J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 11:30 at 1151 (1996, 1997) (hereinafter
In addition, where, as here, a federally registered trademark disclaims
an exclusive right to use descriptive words that are incorporated into the mark as part of
a stylized design apart from the mark as shown, defendants use of the disclaimed
term only does not infringe plaintiffs federally registered mark. See, Grand
Cru Vineyards, Inc. v. Grand Cru, Inc., 87 Civ. 7680, 1990 WL 16152, at *1 (S.D.N.Y.,
Feb. 15, 1990)(Wood, J.)
 But see Section IV(a), infra.
 See also, Orto
Conserviera Sameranese di Giachetti Marino & C. v. Bioconserve S.R.L., 49
U.S.P.Q.2d 2013, 2015 (S.D.N.Y. 1999); Genovese Drug Stores, Inc. v. TGC Stores, Inc.,
939 F. Supp. 340, 346 (D.N.J. 1996); Time Inc. v. Petersen Publ. Co., LLC, 976 F.
Supp. 263, 264 (S.D.N.Y. 1997); In re K-T Zoe Furniture, 16 F.3d 390, 394 (Fed.
Cir. 1994); Security Works!, Inc. v. Security World Intl, Inc., 33 U.S.P.Q.2d
1734, 1739 (S.D. Fla. 1994); Gruner & Jahr USA Publg v. Meredith Corp.,
991 F.2d 1072, 1078 (2d Cir. 1993); Grand Cru Vineyards, Inc. v. Grand Cru, Inc.,
87 Civ. 7680, 1990 WL 16152, at *1 (S.D.N.Y., Feb. 15, 1990); Oxford Indus., Inc. v.
JBJ Fabrics, Inc., 6 U.S.P.Q.2d 1756, 1760-61 (S.D.N.Y. 1988); Chicago Reader, Inc.
v. Metro College Publg Co., 711 F.2d 801, 804 (7th Cir. 1980); FS Services,
Inc. v. Custom Farm Services, Inc., 471 F.2d 671, 673-74 (7th Cir. 1972).
Here, plaintiffs registered mark was
not infringed by Mr. Brodskys use of the domain name "jewsforjesus.org"
because (i) plaintiffs registered mark consists of a generic or descriptive term in
distinctive type style, and Mr. Brodskys use of the domain name jewsforjesus.org was
in a plain lettering style, unlike plaintiffs registered mark, and (ii)
plaintiffs registered mark disclaims the descriptive words apart from the mark as
shown i.e., incorporating the Star of David device.
The Common Law Mark. Plaintiff also claims rights in a common
law mark consisting of the words Jews for Jesus. But plaintiffs alleged mark is
generic, the antithesis of a distinctive mark, and thus not protectible under the
A generic term connotes the "basic nature" of the thing. Blinded
Veterans Assn v. Blinded Am. Veterans Found., 872 F.2d 1035, 1039 (D.C. Cir.
1989)(Ginsburg, J.). Though a generic term may develop "de facto secondary
meaning," regardless of how well recognized it may become, it can never be
protectible. McCarthy § 12:47 at 12-92-93 (citing A.J. Canfield Co. v.
Honickman, 808 F.2d 291 (3d Cir. 1986) and Christian Science Bd. of Dirs. of First
Church of Christ, Scientist v. Evans, 105 N.J. 297 (1987)). Accord, Orto
Conserviera Sameranese di Giachetti Marino & C. v. Bioconserve S.R.L., 49
U.S.P.Q.2d 2013, 2014 (S.D.N.Y. 1999); Technical Publg Co. Lebhar-Friedman, Inc.,
729 F.2d 1136, 1139 (7th Cir. 1984); Public Works Journal Corp. v. Public Works Online,
Inc., No. 97 Civ. 1218 (D.N.J. June 30, 1998)(Greenaway, J.)(attached); Genovese
Drug Stores, Inc. v. TGC Stores, Inc., 939 F. Supp. 340, 347 (D.N.J. 1996); FM
103.1, Inc. v. Universal Broad., Inc., 929 F. Supp. 187, 194 (D.N.J. 1996) .
Genericness may be established by estoppel. Professor McCarthy has explained the
equitable rationale of this rule:
|If the proponent of trademark status itself uses the term
as a generic name, this is strong evidence of genericness. A kind of estoppel arises when
the proponent of trademark use is proven to have itself used the term before the public as
a generic name, yet now claims that the public perceives it as a trademark.
McCarthy § 12:13 at 12-27
(emphasis added)(citing, e.g., Turtle Wax, Inc. v. Blue Coral, Inc., 2
U.S.P.Q.2d 1534 (T.T.A.B. 1987)).
Once the defense of genericness of an unregistered mark (such as plaintiffs
claimed common-law mark) has been raised, the burden shifts to the marks proponent
to show non-genericness. Blinded Veterans, 872 F.2d at 1041. Here, however,
plaintiff is estopped from denying that the words Jews for Jesus are generic. It is
estopped by its own use, because it has repeatedly used this formulation as a general
description of people it regards as Jewish believers in Jesus. These people are not its
members, plaintiff not being a membership organization, or even necessarily its employees
or otherwise affiliated with plaintiff. Indeed, plaintiffs founder describes Jews
for Jesus as "a movement, not an organization." Rosen at 75 . Plaintiff is
also estopped by its disclaimer in its registration statement that it has no mark in the
words "Jews" and "Jesus."
 Testimony regarding consumer surveys cannot affect
genericness. A.J. Canfield Co. v. Honickman, 808 F.2d 291, 301 (3rd Cir. 1986).
 Plaintiff suggests that "occasional" generic
use may be excused from estoppel. Even if the many examples of plaintiffs generic
use could be characterized as "occasional," there is no authority for this
proposition. If allowed, such a vague exception would swallow the rule.
Even absent its own use of the term
generically and the resulting estoppel, the term Jews for Jesus is generic and is not
entitled to protection. This is because the term Jews for Jesus is, as admitted by
plaintiff, a description of any Jews who are "for" Jesus. "A term need not
be the sole designation of an article in order to be generic . . . ." Blinded
Veterans, 872 F.2d at 1041. See, e.g., Union Carbide Corp. v. W.R. Grace
& Co., 213 U.S.P.Q. 400 (T.T.A.B. 1982), affd, 581 F. Supp. 148
(S.D.N.Y. 1983); McCarthy § 12:8 at 12-18. As demonstrated by the testimony of Rabbi
Tovia Singer given at his deposition by the plaintiff, Jews for Jesus is used by the
public when referring generally to Jewish believers in Jesus, without reference to any
particular group or organization.
Dilution occurs either through "tarnishment" or
"blurring." Panavision Intl, L.P. v. Toeppen, 945 F. Supp. 1296,
1304 (C.D. Cal. 1996), affd, 141 F.3d 1316 (9th Cir. 1998). "Tarnishment
occurs when a famous mark is linked to products of poor quality or is portrayed in an
unwholesome manner." Id. (citing Hasbro, Inc. v. Internet
Entertainment Group, Ltd., No. C96-13, 1996 WL 84853, at *1 (W.D. Wash., Feb.
9, 1996)). The antidilution statute does not, however, permit a trademark owner to enjoin
the use of his mark in a noncommercial context found merely to be negative or offensive,
and does not encompass the unauthorized use of a trademark in a noncommercial setting such
as an editorial context. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26,
31-33 (1st Cir.), cert. denied, 483 U.S. 1013 (1987).
Mr. Brodsky cannot be found liable for tarnishing plaintiffs
trademark because plaintiff has not even alleged that Mr. Brodskys use of the domain
name jewsforjesus.org either caused any mark of plaintiff to be associated with (i) goods
or services of poor quality or (ii) unwholesomeness only constitutionally-protected
criticism of its point of view.
Dilution by blurring occurs when customers or prospective customers see
the plaintiff's mark used on a plethora of different goods and services. Hormel Foods
Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 506 (2d Cir. 1996). To prove dilution
by blurring, the plaintiff must show that its mark is famous, not merely a valid
trademark. Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 504 (M.D. Pa.
1998). Plaintiff will not be able to demonstrate that its registered (stylized) mark is
famous, or that if its alleged common law mark is not generic, that it is famous.
Furthermore, it is a cardinal principle that, when comparing two marks,
it is necessary to evaluate the overall impression created by the mark as a whole. Data
Concepts, 150 F.3d at 620; Genovese, 939 F. Supp. at 346; Taj Mahal
Enterprises Ltd. v. Trump, 745 F. Supp. 240, 247 (D.N.J. 1990). Use of a mark on
dissimilar products or services reduces the likelihood of blurring. Johnson Publg
Co., Inc. v. Willitts Designs Intl, Inc., No. 98 C 2653, 1998 WL 341618, at *7
(N.D. Ill., June 22, 1998). Therefore, there is no blurring when it is clear in the
context of a marks use that such use is only superficial and not meant to describe
defendants own offering. Data Concepts, 150 F.3d at 620; Hershey Foods
Corp., 998 F. Supp. at 504; Teletech, 977 F. Supp. at 1414. In fact, if
two marks evaluated in context create different impressions, the alleged use may function
as a separate trademark, not an infringement of the first mark. Lindy Pen Co., Inc. v.
Bic Pen Corp., 725 F.2d 1240, 1245 n.4 (9th Cir. 1985); Genovese, 939 F. Supp.
Based on these principles, Mr. Brodskys use of the domain name
"jewsforjesus.org" did not constitute blurring. The inquisitive "Jews for
Jesus?" title, the immediate and explicit message of Mr. Brodskys website, his
explicit disclaimer of affiliation with plaintiff all made it clear that any use of
a mark of plaintiff was only superficial and not meant to hold out his message as being
that of plaintiff.
CLAIM OF FEDERAL TRADEMARK INFRINGEMENT UNDER 15 U.S.C.A. § 1114 CANNOT SUCCEED.
15 U.S.C.A. § 1114 provides remedies for
infringement only of registered trademarks; consideration of
plaintiffs alleged common law mark is irrelevant to this count. As demonstrated supra
in Section II(D)(1), plaintiff will not be able to demonstrate use, much less
infringement, of its stylized registered mark at trial.
In the event that, contrary to the cited authority, this Court does
find that Mr. Brodsky used plaintiffs stylized registered mark, plaintiff would
still be unable to meet the Lanham Acts requirements for a showing of infringement,
because liability under the Lanham Act also requires a showing of likelihood of
confusion as to source . Scott Paper Co. v. Scotts Liquid Gold, Inc.,
589 F.2d 1225, 1228 (3d Cir. 1978). The relevant "Scott factors" are
As set forth above, under the authority of cases such as Data
Concepts, 150 F.3d at 620, and Grand Cru Vineyards, 1990 WL 16152, when a
registration consists of a descriptive term in distinctive type style, that mark is not
infringed by use in a different lettering style. This is settled law. See section
B. Strength of Mark
Again, as discussed supra, Mr. Brodsky did not use
plaintiffs registered mark, which while strong itself is limited under Natural
Footwear, Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383 (3d Cir. 1984), only to
the narrow format set out in the registration. The user of a registered mark describing
one trademark use may not expand its trademark rights to enjoin use of a weak phrase in a
domain name in association with a different use. CD Solutions, Inc. v. Tooker, 15
F. Supp. 2d 986 (D. Ore. 1998). And the unstylized, unregistrable component of
plaintiffs registered mark the only mark whose infringement would entitle
plaintiff to relief under § 1114 is generic and entitled to no protection at all.
and attention of users; actual confusion
Content, not merely a domain name, must be evaluated to determine
confusion vel non in a domain name infringement case. This presumes a minimum level
of discernment and intelligence on the part of consumers. Thus the Court wrote in CD
While an Internet user seeking to purchase a product of defendants may
go initially to the plaintiffs website, it is unlikely than an actual or prospective
customer of defendants would be confused in its purchasing decision . . . .
15 F. Supp. 2d at 989. Accord, Data Concepts, 150 F.3d at 623-24; Interstellar
Starship Svcs., Ltd. v. Epix, Inc., 983 F. Supp. 1331 (D. Ore. 1997); Teletech,
977 F. Supp. at 1414 . Consumers are expected to distinguish between the use of a mark
to draw attention, as here (and as done by plaintiff in its own activities) and the use of
a mark to indicate source. Stop the Olympic Prison v. United States Olympic Comm.,
489 F. Supp. 1112 (S.D.N.Y. 1980); Girl Scouts v. Personality Posters Mfg. Co., 304
F. Supp. 1228, 1231 (S.D.N.Y. 1969). Furthermore, this Court has recently held that
conspicuous disclaimers or clarifications of affiliation, such as the one used here, may
reduce or eliminate confusion. 800 Spirits Inc. v. Liquor by Wire, 14 F. Supp. 2d
675, 681 (D.N.J. 1998). Accord, Soltex Polymer Corp. v. Fortex Indus., Inc.,
832 F.2d 1325, 1330 (2d Cir. 1987); Roho, Inc. v. Marquis, 902 F.2d 356, 361 (5th
Cir. 1990); Better Bus. Bureau of Metro. Houston, Inc. v. Medical Dirs., Inc., 681
F.2d 397, 405 (5th Cir. 1982).
 Plaintiff asserts that because plaintiff and Mr.
Brodsky are "in direct competition," the Scott factors need not be
considered. But they are not legally in competition at all, as demonstrated in section
IV(A) infra. If by "competition" plaintiff means religious, theological
or ideological competition, it needs hardly be said that such "competition" is
absolutely protected under the First Amendment and cannot form the basis of a Lanham Act
 In its preliminary injunction decision, this Court distinguished Teletech
on the ground that the services provided by the parties differed substantially from each
other. In Teletech both parties were in the telecommunications industry, yet the
court ruled that "brief confusion" based only on the use of a domain name did
not constitute actionable confusion. In contrast, Mr. Brodsky does not provide any
services at all. From a confusion standpoint, his web site espoused an explicitly
antithetical viewpoint to that of plaintiff that is immediately and obviously discernable
to a rational consumer.
Mr. Brodskys use of the domain name
jewsforjesus.org will be shown not likely to cause confusion because a rational consumer
would notice the immediately apparent, anti-Jews for Jesus rhetoric on the website and the
conspicuous disclaimer of affiliation on the screen. The testimony of witnesses claiming
to have been confused by the content of Mr. Brodskys web page into believing that it
was plaintiffs web page despite its harsh anti-Jews for Jesus content and explicit
disclaimer, is either not credible or establishes that these witnesses are not rational
More likely, they were not confused at all merely angry, like
plaintiff. On reading Mr. Brodskys offerings, these supposedly "confused
witnesses" quickly found their way to plaintiffs website, undeterred by Mr.
Brodsky and more zealous than ever in their devotion to plaintiff. As the Second Circuit
explains, their swift reporting to plaintiff of the "offending" use actually negates
the suggestion of confusion:
[I]ndignation is not confusion. To the
contrary, the indignation of those who [reported the offending use] would appear to make
it clear that they feel that the Girl Scouts are being unfairly put upon, not that the
Girl Scouts are the manufacturers or distributors of the object of indignation.
Girl Scouts, 304 F. Supp. at 1231
Finally, Mr. Brodskys actions cannot have caused
so-called initial interest confusion. Initial interest confusion has been applied only
where a potential purchaser is initially confused such that the senior seller may be
precluded from further consideration by the buyer. Weiss Assoc., Inc. v. HRL Assoc.,
Inc., 902 F.2d 1546 (Fed. Cir. 1990). The concept is not applicable here, legally or
factually. See, CD Solutions Inc., 15 F. Supp. 2d at 989; Teletech, supra,
977 F. Supp. at 1414.
 In any case, de minimis actual confusion is
entitled to little weight in an analysis of likelihood of confusion. Scott Paper,
589 F.2d at 1230; Alpha Indus., Inc. v. Alpha Steel Tube & Shapes, Inc., 616
F.2d 440, 445 (9th Cir. 1980); AMF Inc. V. Sleekcraft Boats, 599 F.2d 341, 352 (9th
Cir. 1979); First Keystone Fed. Sav. Bank v. First Keystone Mortgage, Inc., 923 F.
Supp. 693, 706 (E.D. Pa. 1996). Here the alleged actual confusion at most several
consumers compared to the hundreds of thousands of Internet users who have visited
plaintiffs website is if,, credited at all statistically infinitesimal and
truly de minimis.
As set out extensively in the statement of facts, supra, Mr.
Brodsky never had an intent to knowingly infringe plaintiffs registered mark.
Plaintiff will be unable to demonstrate at trial that Mr. Brodsky ever had but the vaguest
notice of the existence and actual makeup of plaintiffs registered mark.
E. Fair Use
As set out supra, Mr. Brodskys use of plaintiffs trademark, even if
such could be shown, was a fair use, which constitutes a defense to any trademark
infringement claim under the Lanham Act. 15 U.S.C.A. § 1115(b)(4). See, Cosmetically
Sealed Indus., 125 F.3d at 30-31 (fair use indicated by prominent display of
defendants own identifying information in addition to mark allegedly infringed); Playboy
Ent. Inc., 47 U.S.P.Q.2d at 1191 (use of disclaimers and obviously non-confusing
content of site demonstrate fair use of mark on Internet site; metatags also constitute
UNFAIR COMPETITION CLAIMS CANNOT SUCCEED.
N.J.S.A. 56:4-1 provides as follows:
No merchant, firm or corporation shall appropriate for his or their own
use a name, brand, trade-mark, reputation or goodwill of any maker in whose product such
merchant, firm or corporation deals.
Mr. Brodsky, the only named defendant in this action, is a natural
person and not a "merchant, firm or corporation." This requirement obviously
disposes of plaintiffs state-law claim; plaintiffs Lanham Act claim is
A. Section 1125(a)(1)(A)
The first section of 15 U.S.C.A. § 1125(a)(1)(A), provides a civil
cause of action under the Lanham Act against persons who use false designations of origin
only in connection with any goods or services or any container of goods. Plaintiff will be
unable to produce any evidence at trial that Mr. Brodsky has used a trademark of plaintiff
in connection with goods or services, if he used it all (which he did not, as extensively
set out supra).
Obviously Mr. Brodsky offered no goods (or containers of goods) here.
Unlike plaintiff, Mr. Brodsky also did not offer a service. It is axiomatic that the
expression of an opinion or entreaty to act or forbear to act, with nothing more, is not
the provision of a service. International Assn of Machinists and Aerospace
Workers, AFL-CIO v. Winship Green Nursing Ctr., 914 F. Supp. 651, 655 (D. Maine), affd,
103 F.3d 196 (1st Cir. 1996); Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931,
934 (D.D.C. 1985). To hold otherwise would be to render virtually any expressive act the
provision of a service, making the "goods and services" requirement of the
statute meaningless. Yet express an opinion is all Mr. Brodsky is alleged to have done,
and all plaintiff can prove he has done.
Plaintiff may also attempt to prove that Mr. Brodsky ran afoul of this
provisions proscription against using a mark that falsely designates the source, not
of goods or services, but of commercial activities. It cannot. As set out above, no
commercial services are provided or even implicated in either Mr. Brodskys or
Outreach Judaisms websites, as defined under controlling Supreme Court precedent.
B. Section 1125(a)(1)(B)
To be liable under 15 U.S.C.A. § 1125(a)(1)(B), a defendant must use a
registered mark in "commercial advertising or promotion":
In order for representations to constitute commercial advertising or
promotion under 1125(a)(1)(B), they must be: (1) commercial speech; (2) by a defendant who
is in commercial competition with plaintiff; (3) for the purpose of influencing consumers
to buy defendant's goods or services. . . . [T]he representations (4) must be disseminated
sufficiently to the relevant purchasing public to constitute "advertising" or
"promotion" within that industry.
Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1384 (5th Cir.
1996). Obviously, this provision is completely irrelevant to any claim against Mr.
Brodsky, which (as demonstrated above) has nothing to do with commercial speech,
commercial competition between the parties in litigation, the purchase of goods or
services, or widespread dissemination within an identified "industry."
V. PLAINTIFF IS
NOT ENTITLED TO ATTORNEYS FEES.
Section 1125(c) provides that upon a
finding of willful intent, and subject to the discretion of the Court and the principles
of equity, a successful plaintiff under that provision may be entitled to the remedies set
forth in 15 U.S.C.A. § 1117 providing that "[t]he Court may, under exceptional
circumstances, award reasonable attorney fees to the prevailing party." Not only
willfulness, but "exceptional circumstances" must be present.
To qualify as "exceptional circumstances" under § 1117, a
"strong showing" of bad faith must be demonstrated. Ferrero U.S.A., Inc. v.
Ozark Trading, Inc., 952 F.2d 44, 48 (3d Cir. 1991). Above all, the key to a fee
application is equity. Securacomm Consulting Inc. v. Securacom Inc., 166 F.3d 182,
187 n.1 (3rd Cir. 1999)(reversing grant of attorneys fees under Lanham Act). Based
on the following, plaintiff cannot demonstrate Mr. Brodskys bad faith or its own
clean hands. Furthermore, each factor mitigating plaintiffs claim of bad faith
provides a separate defenses for Mr. Brodsky to all the claims by plaintiff.
A. Failure to
Designate Mark as Registered
15 U.S.C.A. § 1111 provides as follows:
[A] registrant of a mark registered in the Patent and Trademark Office,
may give notice that his mark is registered by displaying with the mark the words
"Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. &
Tm. Off." or the letter R enclosed within a circle, thus ®; and in any suit for
infringement under this chapter by such a registrant failing to give such notice of
registration, no profits and no damages shall be recovered under the provisions of this
chapter unless the defendant had actual notice of the registration.
Plaintiff has made much in this case of its registered mark, but before
this litigation it never made anything of its registration before the public. The proof at
trial will show that during the time period relevant to this litigation, plaintiff never,
on its website or elsewhere, put the public on notice that it possessed a registered
trademark or claimed common law rights in any mark pursuant to § 1111. Moreover, under
Mr. Brodskys rudimentary (but correct) understanding of trademark law, owners of
registered trademarks usually use such indicia to protect their marks, from which he
deduced that there was no registration.
B. Waiver and Estoppel
Plaintiff would not be equitably entitled to attorneys fees, even
if it prevailed, because Mr. Brodskys actions taken in connection with the two
letters sent by plaintiffs lawyers were not willful or taken in bad faith. "A
defendants refusal to cease using a mark upon demand is not necessarily indicative
of bad faith." Securacomm, 166 F.3d at 189. Indeed, following the first
confusing letter from plaintiff, Mr. Brodskys testimony is that he examined
plaintiffs website looking for reservations of trademark rights and found
If anything, bad faith was demonstrated by plaintiff. Its vague and
misleading letters shifted and obfuscated plaintiffs claims and theories. These
letters avoided responding to relevant legal issues Mr. Brodsky had raised in his
communications with plaintiff.
Furthermore, Mr. Brodsky made a good faith attempt to discern, even
based on his reading of the Planned Parenthood case, whether his actions did
constitute infringement. In good faith he concluded that they did not. Mr. Brodsky also
reasonably concluded that, despite plaintiffs claim, it was technologically
impossible to "divert" Internet users from a website to which the user intended
to go, and that based, again, on plaintiffs two letters
plaintiffs real objections were religious. The Third Circuit has made it clear that
where, as here, a defendant has a
plausible basis for believing that the use of its name was not likely
to cause confusion . . . [his] failure to stop using [a] mark after receiving [a] cease
and desist letter does not support a finding of willful infringement.
Securacomm, 166 F.3d at 189.
It would hardly be just for plaintiffs obfuscation and evasion to
be the lever by which it achieves the rare grant of attorneys fees, reserved only
for the most equitable causes.
Relating to InterNIC Claim
Relying on the first cease and desist letter from plaintiff, Mr.
Brodsky assumed that InterNIC policy, forbidding a domain name that is identical to
anothers registered mark, governed this dispute. Plaintiff made no attempt to settle
this dispute through InterNIC, which would have resulted in a favorable disposition for
Mr. Brodsky, but his reliance was on plaintiffs representation was reasonable. The
fact that plaintiff first invoked and then, sub silentio, ignored InterNIC creates
an estoppel against plaintiff. It certainly does not occasion equitable relief against Mr.
D. First Amendment
Mr. Brodsky had a good faith belief that his actions were protected by
the First Amendment of the Constitution of the United States. First Amendment law counsels
against staking out new territory in the trademark domain at the expense of curtailing the
ability of a speaker to communicate his message. Twin Peaks Prods., Inc. v.
Publications Intl, Ltd., 996 F.2d 1366, 1378 (2d Cir. 1993); Rogers v.
Grimaldi, 875 F.2d 994 (2d Cir. 1989); No Fear, Inc. v. Imagine Films, Inc.,
930 F. Supp. 1381 (C.D. Cal. 1995). In determining the outer limits of trademark
protection the weight of the risks of confusion and suppression of expression may tip the
scales against trademark protection. Silverman v. CBS, Inc., 870 F.2d 40, 49 (2d
Cir. 1989). Similarly, because a trademark may frequently be the most effective means of
focusing attention on the trademark owner or its product, the recognition of exclusive
rights encompassing such use would permit the stifling of unwelcome discussion, and is
forbidden. L.L. Bean, Inc., 811 F.2d at 31; United We Stand Am., Inc. v. United
We Stand, Am. N.Y., Inc., 128 F.3d 86, 92, n.3 (2d Cir. 1997), cert. denied,
118 S. Ct. 1521 (1998); Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402-03 n.8
(8th Cir 1987).
Considering that, as discussed supra, there is no precedent for the propositions
that (1) use of the descriptive, non-stylized, disclaimed elements of a stylized trademark
is trademark infringement of the registered mark; (2) that a hyperlink to a commercial
website renders the linking website commercial speech ; (3) that a website operated by
a non-profit religious organization that sells tapes to raise funds and spread its message
constitutes "commercial speech"; (4) that "harm" to a competing
ideological voice, consisting of "convincing" people to disagree with that
voice, constitutes "commercial speech"; and that Mr. Brodskys activities
also fell well within the bounds of fair use of a generic or, at best, descriptive
unregistered mark, the evidence will show that Mr. Brodsky was reasonable in believing
that a federal court would not limit free speech by making novel rulings along these
For the foregoing reasons, this Court should, after hearing all the evidence and
considering the applicable law, find for the defendant Steven Brodsky and against the
plaintiff in this matter.
PITNEY, HARDIN, KIPP & SZUCH
Attorneys for Defendant
Steven C. Brodsky
RONALD D. COLEMAN (RC 3875)
For the Firm
DATED: April 15, 1999
 Mr. Brodsky recognizes that the Court relied on Planned
Parenthood, supra, for this and the following proposition. As argued above,
however, it is respectfully submitted that the weight of legal authority is contrary to
the holding in Planned Parenthood, as demonstrated above.