As Ron Coleman’s Likelihood of Confusion blog observes, Jews for Jesus achieved one of the early awful victories for trademark holders in 1998 over this very same issue. In Jews for Jesus v. Brodsky, 993 F.Supp 282 (D.NJ 1998), Jews for Jesus won a trademark infringement claim against the user of the name “jewsforjesus.org” and “jews-for-jesus.com.” (Coleman was Brodsky’s attorney and provides a good summary and links.) This case is actually used to be pretty famous (or infamous) in domain name/TM circles. As use and sophistication about the Internet has grown, however, courts have backed away from it and the pendulum has begun to swing the other way (as I noted last year in my entry on the jerryfalwell.com case).
Comparing the 1998 case and the 2006 case provides some interesting lessons in how much the world has changed in 8 years. My thoughts below, but some disclosure first- I helped draft an amicus brief in support of Brodsky in 1998 in my roll as assistant general counsel to the now defunct Domain Name Rights Coalition.
For those just tuning in, Jews for Jesus is an organization dedicated to evangalizing (primarily to Jews) that belief in Jesus Christ (or Yeshu) as the Son of God and Savior of Mankind is consistent with traditional Judaism and, in fact, compelled by a fair reading of the Biblical texts.
Needless to say, most of us traditional Jews find this an utter crock. Happily, here in the U.S., we fight speech we dislike with more speech. The J4Js can print their pamphlets and distrubute them and preach the word, and Jews who disagree can do the same.
So back in 1997, Brodsky got annoyed that the Jews for Jesus had set up a website at jewsforfesus.com preaching what he considered to be a pack of lies. So he set up a website at jews-for-jesus.com and jewsforjesus.org. It was a fairly simple page, denouncing the idea that believing that Jesus was the MEssiah and the Son of God was the opposite of “true Judaism” and linking to a traditional Jewish organization for the interested web surfer to determine what “true Judaism” was (in Brodsky’s view) all about.
J4J sued for trademark infringement. To win, however, J4J had to prove that the mark was used “in commerce.” Unlike copyright, trademark only protects a commercial use (which can include non-profit). In addition, under traditional trademark law, J4J had to prove that someone coming to the webpage would be confused and believe the content was actually sponsored by J4J and that the person was receiving J4J services.
On first glance, under traditional trademark law, this should have been a no brainer. Brodsky was not offering anything in commerce. He was engaging in protected first amendment expression. I can hand out pamphlets in real space that purport to give “The Real Story About J4J” and say all kinds of nasty things about them and it is protected First Amendment speech. The alternative would be to allow anyone who wished to trademark their name and then supress all critical speech via application of trademark.
But the Judge in the case, who displayed an amazing ignorance of the Internet (this was 1998 byt the time we got to court), was gonna get Brodsky no matter what. Reading the opinion, it is clear that the judge was just outraged at the t idea of this “Deception” of using J4J’s name to attract attention to Brodsky’s site. The fact that you could do the same thing quite legally in meat space did not appear to have any impact. Nor did the fact that Brodsky’s actions did not preclude J4J from getting their own speech out there. (They had, after all, picked first).
So to find a commercial use, the court invented a new doctrine. Brodsky hadn’t asked for any money, but he had linked to another non-commercial website which, along with all its other speech, solicited contributions (by mail, this was before most organizations took online contributions). Stretching beyond any law which had previously existed, the Brodsky court found that this linking to another site that did ask for money was somehow a use “in commerce.”
O.K., but how to deal with the question of confusion? Here the judge at least relied on a pre-existing doctrine, albeit a rather rare one, “initial interest confusion.” Normally, to prove trademark infringement, you need to show that the person was decieved or likely to be decieved at the point of sale. “Initial interest confusion” is a doctrine holding that if you attract someone’s interest to your product using someone else’s trademark, or one confusingly similar, it is an infringement even if the person knows full well at the time of purchase that the item is not connected with the infrnging trademark. For example, if I have a shoe store that sells only Adidas, but I attract someone by prominently displaying Nike. They walk in, see no Nike shoes, but decide, ‘hey, I want to buy sneakers and even though I really wanted Nike, I’m here now so I’ll buy Adidas.’
There are, in my opinion at least, some tremendous problems with the doctrine. In fact, prior to J4J, one could count the number of cases relying on “initial interest confusion” without taking off your socks. More to the point, whatever merit it might have in the context of the sale of goods, it has no validity in the context of free speech. As a speaker, I may not misrepresent myself. But I am allowed to use someone else’s trademark to attract attention so that you know I am discussing them.
But the J4J court, quite determined to find against this “deceptive” website of Brodsky’s, expanded the initial interest confusion doctrine to cover the case. According to the court, an internet user wanting to find J4J and guessing the wrong name would find Brodsky’s site and become so hopelessly confused that he or she would give up trying to find the official J4J site forever. (Of course, J4J had picked their choice of name first, so even if Brodsky had done nothing, the poor confusable user would have gotten a “404 Not Found” rather than the “official” J4J website).
This decision had a slew of negative consequences. First, it dramatically expanded the defintion of “in comemrce” to include links that might ask for money. Second, it elevated the “initial interest confusion” doctrine from curiosity to manstream. Over the next several years, judges unfamiliar with the internet would adopt the logic of Brodsky that a trademark holder had a right to “their” name, in all its permutations and in any TLD, regardless of the actual use of the name. This, in turn, lead to the passage of the Anti-Cybersquating Protection Act (ACPA), which created a new round of litigation.
Eventually, the tide turned. For one thing, academic publications in the law journals judges and courts read was almost entirely negative toward Bordsky and its progeny. Most influential, perhaps, was Mark Lemley’s The Modern Lanham Act and the Death of Common Sense, published in the Yale Law Review in 1999. In addition, as use of the internet became more widespread, judges finally got more familiar with it. Arguments that people would not use the internet or not use it for commerce if they could not plug in trademark.com and get to the “right” website seem rather absurd in light of common experience. While folks may still guess at a domain name, the proliferation of names and organizations and the improvement in search engines such as Google make the logic on Brodsky seem ridiculous.
Finally, the atmospherics changed. In the late 1990s, the image of the “cybersquatter” was a greedy hacker, pornographer or parasite ripping off a good corporate citizen. The luster has fallen a bit from our corporate citizens, and the proliferation of big companies going after “gripe sites” seeking to utilize Brodsky and its progeny have highlighted the free speech issues.
So I don’t give J4J much chance of success. To the contrary, if J4J are foolish enough to continue pressing their suit, I would like to see their previous victory reversed in effect (if not in substance). No one is going to guess that they could find the “official” J4J blog on blogspot by guessing trademark.blogspot.com. And, while there is little difference cotent-wise between Brodsky’s static webpage and a blog critical of J4J, bloggers look enough like news media (at least at the moment) for courts to more easily “get” the First Amendment issue.
Still, I wish wisdom didn’t always take so long to catch up with reality. As Eccl. warns: “wisdom is better than weapons of war, but one sinner destroyeth much good.” An awful lot of folks lost the website, significant cash, and their right of free expression because an ignorant judge in New Jersey decided he was going to “get” a deceptive website and the devil with the law.
Stay tuned . . . .