TABLE OF CONTENTS

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.

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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.

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.

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."

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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 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?"

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[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).

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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.

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.

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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.

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.

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.