Designer Skin LLC v. S & L Vitamins, Inc., et al.
Jews for Jesus v. Steven C. Brodsky
993 F. Supp. 282 (D.N.J. Mar. 6, 1998) aff'd. 159 F. 3d 1351 (3d Cir. 1998)
Plaintiff Jews for Jesus, a non-profit ministry, "teaches Jesus is the Messiah of Israel and the Savior of the World..." and operates a website at www.jews-for-jesus.org. Plaintiff owns the federally registered trademark "Jews for Jesus" in which the "o" is depicted as a Jewish Star. Plaintiff has continuously used the phrase "Jews for Jesus" for over 24 years in connection with its activities, which phrase it has also extensively advertised.
Defendant, an avid critic of the plaintiff organization, created a website at www.jewsforjesus.org to intercept individuals seeking plaintiff's website and expose them to viewpoints diametrically opposed to those of the plaintiff organization. Defendant's website contained statements critical of plaintiff's organization. It also contained a hyperlink to a website operated by Outreach Judaism, an organization unaffiliated with defendant which is also highly critical of plaintiff's activities. Outreach Judaism's site offers certain merchandise for sale, and the organization solicits donations to support its activities.
Defendant neither offers materials for sale on his site, nor solicits donations from the public for his activities. Defendant's website contained a disclaimer, that stated that the site was "in no way affiliated with ... Outreach Judaism ... or ... Jews for Jesus."
Plaintiff argued that defendant's operation of this site constituted violations of both federal and New Jersey state statutes prohibiting trademark infringement, dilution and unfair competition. The court agreed, relying heavily on Planned Parenthood Fed'n of Am. v. Bucci, 1997 WL 133313 (S.D.N.Y. Mar. 24, 1997) aff'd by Summary Order (2d. Cir. Feb. 9, 1998). As a result, the court issued a preliminary injunction enjoining defendant from continuing to utilize "Jew for Jesus" in the domain name of his site.
The court found that defendant had infringed both plaintiff's federally registered mark and its common law service mark in the phrase "Jews for Jesus" because it had used a virtual replica of plaintiff's mark in commerce in connection with the sale, offering for sale, distribution or advertising of goods or services in a way likely to cause confusion among members of the public.
Defendant concededly did not use an identical replica of plaintiff's federally registered mark in its domain name, because the phrase "Jews for Jesus" as it appeared in defendant's domain name did not contain a stylized "o" depicted as a Jewish star. This did not prevent the court from finding trademark infringement.
In order to constitute infringement, exact similarities are not required between the allegedly confusing marks. Rather, it is sufficient that enough of the mark is confusingly similar or has been used to deceive the public.
Because defendant's domain name contained a phrase virtually identical to plaintiff's mark, the public was likely to be confused as to the source of the information found on defendant's website. ("Where an infringer uses the exact mark of the holder of a mark, a great likelihood of confusion exists."). Significantly, the use of a disclaimer expressly disavowing any relationship between plaintiff and defendant did not suffice to prevent such confusion.
Lastly, the court, following the lead of Planned Parenthood, held that defendant's activities were "in connection with the sale, offering for sale, distribution or advertising of any goods or services."
The court further found that defendant's conduct ran afoul of the Lanham Act's anti-dilution prohibitions. "Defendant is using the [plaintiff's famous] Mark ... to lure individuals to his Internet site where he makes disparaging statements about the Plaintiff Organization. ... Such conduct amount to "blurring" and "tarnishment" of the Mark ...".
Defendant argued that his use of the mark was not "in commerce", an essential prerequisite for a dilution claim. Following Planned Parenthood, the court concluded that defendant's conduct was indeed commercial.
The court also found that defendant's conduct violated the Lanham Act's prohibitions against unfair competition and false designation of origin, as well as New Jersey state statutes prohibiting trademark infringement and dilution.