US District Court, District of NJ
(1999)
Jews for Jesus v. Steven C. Brodsky
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| 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.10
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).
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.
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.12
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.13
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.
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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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.
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.
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.
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.
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.
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.17
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