Jews for Jesus v. Brodsky

• Citation: 993 F.Supp. 282
• Decision Date: 06 March 1998
• Docket Number: No. CIV. A. 98-274(AJL).,CIV. A. 98-274(AJL).
• Parties: JEWS FOR JESUS, Plaintiff, v. Steven C. BRODSKY, Defendant.
• Court: U.S. District Court — District of New Jersey

993 F.Supp. 282

JEWS FOR JESUS, Plaintiff, v. Steven C. BRODSKY, Defendant.

No. CIV. A. 98-274(AJL).

United States District Court, D. New Jersey.

March 6, 1998.

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Michael N. Karp, Livingston, NJ, Paul A. Winick, Thelen, Marrin, Johnson & Bridges LLP, New York, NY, James P. Eriksen, General Counsel, Jews for Jesus, San Francisco, CA, for Plaintiff.

Ronald D. Coleman, Murray J. Laulicht, Michael J. Dunne, Pitney, Hardin, Kipp & Szuch, Morristown, NJ, for Defendant.

OPINION

LECHNER, District Judge.

This action involves, in the words of the defendant, a "bogus" Internet site and, again, in the words of the defendant, his use of "deceit and trickery." As a result, there is a dispute¹ between the plaintiff, Jews for Jesus (the "Plaintiff" or the "Plaintiff Organization"), and the defendant, Steven Brodsky (the "Defendant"), in connection with the use by the Defendant of the Internet² domain names³ "jewsforjesus.org" and "jews-for-jesus.com".⁴

On 23 January 1998, the Plaintiff filed a complaint (the "Complaint"). The Plaintiff contends the deliberate diversion by the Defendant of Internet users to the Internet site established by the Defendant "has caused and is causing irreparable harm to [P]laintiff, in violation of federal, state and common laws governing trademark and unfair competition." Complaint ¶ 12. Specifically, the Plaintiff Organization seeks, among other things, a preliminary injunction enjoining the Defendant from (1) diluting the federally-registered service mark, "Jews for Jesus" and the common law service mark, "Jews for Jesus" (2) infringing the registered mark of the Plaintiff Organization, (3) unfairly competing and falsely designating, describing and representing the origin of the Internet Web⁵ sites maintained by the Defendant, (4) diluting the Plaintiff's mark pursuant to state statutory law, (5) infringing Plaintiff's rights in its name and registered mark in violation of state statutory law and (6) unfairly competing in violation of common law. See Complaint. Jurisdiction is alleged pursuant to 15 U.S.C. § 1121, 28 U.S.C. § 1331, 1338 and 1367. See id. ¶ 1.

Currently before the court is an order to show cause (the "Order to Show Cause") seeking a preliminary injunction⁶ filed by the Plaintiff. For the reasons set forth below, the request for a preliminary injunction is granted.⁷

I. BACKGROUND

A. Procedural History

On 28 January 1998, the Plaintiff Organization filed the Order to Show Cause. The Defendant appears to have been initially served with the Order to Show Cause via electronic mail on 27 January 1998.⁸ See Winick Affidavit ¶ 7. At the 28 January Hearing, decision was reserved on the Order to Show Cause and a return date was initially set for 10 February 1998 to allow the Defendant an opportunity to file opposition. The return date was adjourned to 13 February 1998 to allow the Plaintiff Organization an opportunity to file a brief in reply to the Defendant Brief.

At the 13 February Hearing, the parties were heard on the issue of whether a preliminary injunction should be issued. The parties declined, however, to treat the 13 February Hearing as a hearing for a permanent injunction. See 13 February Hearing Tr. at 4.

B. Facts

1. The Parties

a. The Plaintiff Organization

The Plaintiff Organization is a non-profit, international outreach ministry that was founded in 1973. See Perlman Amended Aff. ¶ 14. It is organized under the laws of the State of California and maintains its principal place of business in San Francisco, California. See Complaint ¶ 5. The Plaintiff Organization teaches Jesus is the Messiah of Israel and the Savior of the World; its mission includes advocacy, education and religious camaraderie for both Gentiles and Jews. See id. ¶ 4; Perlman Amended Aff. ¶ 4. The Plaintiff Organization employs approximately 145 staff members, has twelve permanent branches worldwide and an additional sixty-eight chapters which perform voluntary activities on its behalf. See id. ¶ 7.

The Plaintiff Organization asserts it has used the name "Jews for Jesus" continuously in interstate commerce for more than twenty-four years. See Complaint ¶¶ 13-14; Perlman Amended Aff. ¶ 4. As such, throughout the Complaint it is asserted that the phrase "Jews for Jesus" is a common law service mark. See, e.g., Complaint ¶¶ 11-14, 16, 37-39, 47-49, 63, 70, 74 and 75. The Plaintiff also asserts it owns the rights to the stylized service mark "Jews for Jesus" (the "Mark") that was registered (U.S.Reg. No. 1,252,889) on the Principal Register of the United States Patent and Trademark Office (the "PTO") on 4 October 1983 (the "Registration").⁹ See id. ¶ 15; Perlman Amended Aff. ¶ 6. According to the Plaintiff, the Mark has been maintained since that date and is now incontestable pursuant to 15 U.S.C. § 1065 ("Section 1065"). See Plaintiff Brief at 6; Plaintiff Reply Brief at 4-5. The Registration indicates the Mark fits within International Classification 16 ("Class 16") and is for "Religious Pamphlets." See Exhibit A to the Complaint, at 2.

The Plaintiff Organization distributes throughout the United States four publications in connection with its ministry and a catalog of merchandise. See Perlman Amended Aff. ¶ 8. The Plaintiff Organization has fulfilled its "mission by providing education and information through classes, lectures, meetings, television, radio and the dissemination of information through magazines, brochures, newspapers and the Internet to millions people in the United States and abroad." Id. ¶ 4. As well, the Plaintiff "has conducted annual advertising campaigns since 1982." Id. The Plaintiff Organization "has expended a substantial amount of money publishing ads in national publications like the New York Times, the Washington Post, the Wall Street Journal, Newsweek, Parade, and TV Guide." Id. In addition, the Plaintiff Organization has conducted annual advertising campaigns¹⁰ on New Jersey-based radio stations and in numerous local and national newspapers and has advertised on billboards and in the transit system in the New York/New Jersey metropolitan area. See id. ¶¶ 9-10, 14; Exhibit 2 to Perlman Supplemental Aff. ¶ 6; see also Complaint ¶ 63.

Representatives of the Plaintiff Organization have appeared on numerous radio and television programs and have distributed throughout New York City pamphlets regarding the teachings of the Plaintiff Organization.¹¹ See Perlman Amended Aff. ¶ 12. The Mark appears on most of the Plaintiff Organization advertisements and on its Internet Web site. See id. ¶ 11; Perlman Supplemental Aff. ¶ 6. At the 13 February Hearing, counsel for the Plaintiff Organization acknowledged some of the advertisements and literature distributed by the Plaintiff Organization does not contain the stylized letter "O" ("O") in the word "for" when referring to the Plaintiff Organization. See 13 February Hearing Tr. at 35. Nevertheless, the Plaintiff has established it "has continuously used the name Jews for Jesus in its publications, media ads and other communications throughout the United States during the past 24 years." Perlman Amended Aff. ¶¶ 5-6.

It is the position of the Plaintiff Organization "[t]hat by virtue of its extensive national use of the name Jews for Jesus and, particularly, its use in the New York/New Jersey Metropolitan area, Jews for Jesus has developed significant recognition and good will. The name Jews for Jesus has come to be recognized by the public as identifying [the Plaintiff Organization] and its mission, message and services." See id. ¶ 24. "Furthermore, the dissemination of the name on the Internet through Jews for Jesus' Web site has established the name among people who use the Internet as being synonymous with the mission and message of the [Plaintiff O]rganization." Id. It appears the Plaintiff Organization has extensively advertised its "mission, message, and services, in national and local publications" over the past ten years. Perlman Supplemental Aff. ¶¶ 4. A year-by-year breakout of these expenditures is located in Exhibit 1 to the Perlman Supplemental Aff. See id.

In March 1995, the Plaintiff Organization established an Internet site with the domain name "jews-for-jesus.org". See Perlman Amended Aff. ¶ 16. This domain name does not contain the stylized letter "O" ("O") in the word "for". During the 13 February Hearing, counsel for the Plaintiff Organization indicated the domain name omits spaces before and after the word "for," and does not contain the stylized letter "O" ("O") in that word, because such characters are not recognized in domain names. See 13 February Hearing Tr. at 4 (incorporating arguments set forth in papers submitted in support of Order to Show Cause). The "jews-for-jesus.org" Internet site contains information about, among other things, the mission and message of the Plaintiff Organization. See Perlman Amended Aff. ¶ 17. Significantly, the Plaintiff Organization Internet site also contains electronic versions of many of its publications. See id. None of these publications, however, can be downloaded. See Plaintiff Reply Brief at 10. The Plaintiff Organization Internet site offers various items for sale, see Perlman Amended Aff. ¶ 17; it is commercial in nature.

b. The Defendant

The Defendant is a professional Internet site developer. See Brodsky Certif. ¶ 3. The Plaintiff Organization contends the Defendant is also an attorney who is "a vocal opponent" of its mission, teachings, message and services. See Plaintiff Brief at 6.

The Defendant admits he has critical things to say about the Plaintiff Organization which he asserts are protected by the First Amendment. See Defendant Brief at 5, 32-34. The following statements¹² about the Plaintiff Organization have been attributed to the Defendant:

The Jews for Jesus cult is founded upon deceit and distortion of fact. See Exhibit E to the Complaint; Exhibit 2 to Perlman...