|Jews for Jesus
v. Steven C Brodsky
US District Court, District of NJ
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
DISTRICT OF NEW JERSEY
JEWS FOR JESUS,
STEVEN C. BRODSKY,
98 Civ. 274 (AJL)
AMENDED TRIAL BRIEF OF DEFENDANT STEVEN C. BRODSKY
PITNEY, HARDIN, KIPP & SZUCH
P.O. Box 1945
Morristown, New Jersey 07962
Attorneys for Defendant
Steven C. Brodsky
Murray J. Laulicht (ML 4606)
Michael J. Dunne
On the Brief:
Ronald D. Coleman (RC 3875)
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 .
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
plaintiffs 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
 Many facts relating to plaintiffs 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.
Given all that has been set forth above, Mr. Brodskys good faith interpretation
of the law that, as demonstrated below, favored his position was eminently reasonable.
Plaintiffs 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, plaintiffs assertion of the Internets quasi-official
InterNIC standards to support its claim, followed by its sub rosa retreat from
those standards, can hardly be placed at Mr. Brodskys 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. Plaintiffs founder
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
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
plaintiffs claim for attorneys fees, but all of plaintiffs claims are
without legal merit.
OF FACTS 
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. Plaintiffs
corporate form is not in the record, but significantly it is not a membership
organization: A person cannot be a "member" of plaintiffs ministry or
organization and thereby become "a Jews for Jesus" the way a person can be
"a Mason" or "a Girl Scout."
Rather, in plaintiffs 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. Plaintiffs own founder has admitted that Jews
for Jesus is "a movement, not an organization." Rosen at 75.
 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.
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
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 . 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 plaintiffs
website at that URL. Prior to this litigation, inputting "jewsforjesus.org"
would not and could not have taken a user to plaintiffs 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
plaintiffs 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. Brodskys 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?"
 Although this accurate characterization of the mark as stylized appears in
paragraph 14 of plaintiffs own Amended Complaint and in the relevant trademark
registration, plaintiff has nonetheless denied its own allegation and claims
that the trademark is not stylized. Plaintiffs Responses to Defendants Request
for Admissions, Admission No. 2. Nowhere in its pleadings is the plaintiffs 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 plaintiffs 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).
Besides a brief statement of opposition to plaintiffs 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 Singers "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
Singers lectures mainly, are sold solely to support Outreach Judaisms
religious and educational mission. These sales account for less than half of Outreach
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
Judaisms 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. Brodskys 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. Brodskys 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. Brodskys operation of his website
had any effect on the actual accessibility of plaintiffs website at
"jews-for-jesus.org." There is no evidence that any Internet user was unable to
gain access to plaintiffs website as a result of Mr. Brodskys actions. In
fact, the evidence will demonstrate that "traffic" to plaintiffs website
hit an all-time high and remained higher than before, after Mr. Brodsky posted his
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. Brodskys actions violated plaintiffs 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.
On receipt of this letter, Mr. Brodsky went to plaintiffs
website. The only form of the trademark he saw on the home page of plaintiffs
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 plaintiffs 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. Brodskys "statement that
numerous and substantial differences is contested." Plaintiffs
counsel did not explain why it "contested" Mr. Brodskys analysis, however.
Plaintiffs counsel did not state that it had a registered stylized trademark and
that it regarded his domain name as confusingly similar to that mark. Plaintiffs
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, plaintiffs 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 plaintiffs claim.
On January 16, 1998, plaintiffs counsel sent another letter to
Mr. Brodsky. It again threatened legal action, but it did not at all address Mr.
Brodskys 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.
Brodskys analysis of InterNIC policy. In fact, it as much as conceded that analysis,
as no mention was ever made by plaintiff of InterNIC again.
Plaintiffs 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. Brodskys 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 letters claim that he was "diverting"
Internet users from plaintiffs website was fanciful, because there was no way to
prevent users from gaining the same access to plaintiffs 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 peoples thinking, not
Internet traffic. Plaintiffs December 16th letter admitted that, from
plaintiffs point of view, Mr. Brodskys "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.
Based on the preliminary record before it, including the
defendants brief prepared on short notice solely in opposition to plaintiffs
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.
COURT IS REQUIRED TO CONSIDER PLAINTIFFS CLAIMS AND MR. BRODSKYS 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 plaintiffs claims. The events leading up to the granting of the
preliminary injunction, from plaintiffs 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 plaintiffs
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.
CLAIMS OF TRADEMARK DILUTION AND UNFAIR COMPETITION CANNOT SUCCEED.
Plaintiffs claims under the federal and New Jersey trademark dilution laws cannot
succeed because these laws explicitly exempt non-commercial speech such as defendant
Steven Brodskys, 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.), affd
without opinion, 159 F.3d 1351 (3d Cir. 1998).