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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
(Continuation)

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. Brodsky’s 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 Judaism’s 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 basis.

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 Ass’n., 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 Fed’n of the Blind, 487 U.S. 781 (1988); Cincinnati v. Discovery Network, Inc., supra; Village of Schaumberg v. Citizens for a Better Env’t, 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 Judaism’s 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 [4].

Finally, in its preliminary opinion this Court relied on the holding in Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y.), aff’d 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 court’s 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 Constitution.

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. Brodsky’s activities.

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[4] Plaintiff’s own website contains numerous links to all sorts of websites — including that of the Jerusalem Post and the Yahoo indexing system’s 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.

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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) [5]. The statute’s 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.), aff’d, 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. Brodsky’s 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).

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[5] 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" (emphasis added).

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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. Brodsky’s 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 [6], 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 Acquired Distinctiveness

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 plaintiff’s 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 11—51 (1996, 1997) (hereinafter "McCarthy") [7].

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, defendant’s use of the disclaimed term only does not infringe plaintiff’s 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.)

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[6] But see Section IV(a), infra.

[7] 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 Int’l, Inc., 33 U.S.P.Q.2d 1734, 1739 (S.D. Fla. 1994); Gruner & Jahr USA Publ’g 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 Publ’g 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).

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Here, plaintiff’s registered mark was not infringed by Mr. Brodsky’s use of the domain name "jewsforjesus.org" because (i) plaintiff’s registered mark consists of a generic or descriptive term in distinctive type style, and Mr. Brodsky’s use of the domain name jewsforjesus.org was in a plain lettering style, unlike plaintiff’s registered mark, and (ii) plaintiff’s 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 plaintiff’s alleged mark is generic, the antithesis of a distinctive mark, and thus not protectible under the antidilution laws.

A generic term connotes the "basic nature" of the thing. Blinded Veterans Ass’n 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 Publ’g 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) [8].

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 plaintiff’s claimed common-law mark) has been raised, the burden shifts to the mark’s 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, plaintiff’s founder describes Jews for Jesus as "a movement, not an organization." Rosen at 75 [9]. Plaintiff is also estopped by its disclaimer in its registration statement that it has no mark in the words "Jews" and "Jesus."

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[8] Testimony regarding consumer surveys cannot affect genericness. A.J. Canfield Co. v. Honickman, 808 F.2d 291, 301 (3rd Cir. 1986).

[9] Plaintiff suggests that "occasional" generic use may be excused from estoppel. Even if the many examples of plaintiff’s generic use could be characterized as "occasional," there is no authority for this proposition. If allowed, such a vague exception would swallow the rule.

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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), aff’d, 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.

2. Tarnishment

Dilution occurs either through "tarnishment" or "blurring." Panavision Int’l, L.P. v. Toeppen, 945 F. Supp. 1296, 1304 (C.D. Cal. 1996), aff’d, 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 plaintiff’s trademark because plaintiff has not even alleged that Mr. Brodsky’s 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.

3. Blurring

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 Publ’g Co., Inc. v. Willitts Designs Int’l, 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 mark’s use that such use is only superficial and not meant to describe defendant’s 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. at 340.

Based on these principles, Mr. Brodsky’s use of the domain name "jewsforjesus.org" did not constitute blurring. The inquisitive "Jews for Jesus?" title, the immediate and explicit message of Mr. Brodsky’s 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.

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III. PLAINTIFF’S 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 plaintiff’s 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 plaintiff’s stylized registered mark, plaintiff would still be unable to meet the Lanham Act’s requirements for a showing of infringement, because liability under the Lanham Act also requires a showing of likelihood of confusion as to source [10]. Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). The relevant "Scott factors" are considered below:

A. Similarity

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 I(D)(1).

B. Strength of Mark

Again, as discussed supra, Mr. Brodsky did not use plaintiff’s 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 plaintiff’s registered mark — the only mark whose infringement would entitle plaintiff to relief under 1114 — is generic and entitled to no protection at all.

C. Care 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 Solutions Inc.:

While an Internet user seeking to purchase a product of defendants may go initially to the plaintiff’s 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 [11]. 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).

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[10] 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 claim.

[11] 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.

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Mr. Brodsky’s 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. Brodsky’s web page into believing that it was plaintiff’s 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 consumers.

More likely, they were not confused at all – merely angry, like plaintiff. On reading Mr. Brodsky’s offerings, these supposedly "confused witnesses" quickly found their way to plaintiff’s 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 [12].

Finally, Mr. Brodsky’s 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.

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[12] 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.

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D. Intent

As set out extensively in the statement of facts, supra, Mr. Brodsky never had an intent to knowingly infringe plaintiff’s 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 plaintiff’s registered mark.

E. Fair Use

As set out supra, Mr. Brodsky’s use of plaintiff’s 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 defendant’s 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 fair use).

IV. PLAINTIFF’S 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 plaintiff’s state-law claim; plaintiff’s Lanham Act claim is analyzed below.

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 Ass’n of Machinists and Aerospace Workers, AFL-CIO v. Winship Green Nursing Ctr., 914 F. Supp. 651, 655 (D. Maine), aff’d, 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 provision’s 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. Brodsky’s or Outreach Judaism’s websites, as defined under controlling Supreme Court precedent.

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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. Brodsky’s 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. Brodsky’s 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 by Plaintiff

Plaintiff would not be equitably entitled to attorneys’ fees, even if it prevailed, because Mr. Brodsky’s actions taken in connection with the two letters sent by plaintiff’s lawyers were not willful or taken in bad faith. "A defendant’s 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. Brodsky’s testimony is that he examined plaintiff’s website looking for reservations of trademark rights — and found none.

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If anything, bad faith was demonstrated by plaintiff. Its vague and misleading letters shifted and obfuscated plaintiff’s 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 plaintiff’s claim, it was technologically impossible to "divert" Internet users from a website to which the user intended to go, and that — based, again, on plaintiff’s two letters — plaintiff’s 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 plaintiff’s obfuscation and evasion to be the lever by which it achieves the rare grant of attorneys’ fees, reserved only for the most equitable causes.

C. Estoppel 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 another’s 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 plaintiff’s 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. Brodsky.

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 Int’l, 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).

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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 [13]; (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. Brodsky’s 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 lines.

CONCLUSION

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

By:__________________________
RONALD D. COLEMAN (RC 3875)
For the Firm

DATED: April 15, 1999

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[13] 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.

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