Vaad L'Hafotzas Sichos, Inc. v. Kehot Publication Society

156 F. Supp. 3d 363, 117 U.S.P.Q. 2d (BNA) 1722, 2016 U.S. Dist. LEXIS 5586, 2016 WL 183226
CourtDistrict Court, E.D. New York
DecidedJanuary 14, 2016
Docket10-CV-4976 (FB) (JO)
StatusPublished

This text of 156 F. Supp. 3d 363 (Vaad L'Hafotzas Sichos, Inc. v. Kehot Publication Society) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Vaad L'Hafotzas Sichos, Inc. v. Kehot Publication Society, 156 F. Supp. 3d 363, 117 U.S.P.Q. 2d (BNA) 1722, 2016 U.S. Dist. LEXIS 5586, 2016 WL 183226 (E.D.N.Y. 2016).

Opinion

MEMORANDUM AND ORDER

BLOCK, Senior District Judge

Since the passing of Rabbi Menachem Mendel Schneerson (the “Rebbe”), a religious dispute has divided the Chabad Lu-bavitch community. A minority of the community, including counterclaim defendants Vaad L’Hafotzas Sichos; Inc. (“Vaad”) and Zalman Chanin, holds the belief that the Rebbe is the Messiah and still lives. This messianic belief has caused a rift that has spawned a spate of litigation. The Court has previously been called upon to decide whether an individual who believed the Rebbe was the Messiah could publish an altered edition of a book of the Rebbe’s letters, Merkos L’Inyonei Chinuch, Inc. v. John Doe Nos. 1-25, 172 F.Supp.2d 383 (E.D.N.Y.2001), whether the Patent and Trademark Office (“PTO”) properly registered the Kehot Publication Society logo as a trademark owned by Merkos L’lnyonei Chinuch (“Merkos”), Vaad L’Hafotzas Sichos, Inc. v. Kehot Publ’n Soc’y, 935 F.Supp.2d 595 (E.D.N.Y.2013), and whether Vaad held the copyright to various works of the Rebbe, Vaad L’Hafotzas Sichos, Inc. v. Krinsky, 133 F.Supp.3d 527, 2015 WL 5719826 (E.D.N.Y. Sept. 30, 2015), appeal docketed, No. 15-4186 (2d Cir. Dec. 29, 2015).

Now before the Court is the residual issue undecided in the Vaad trademark case. There, the Court granted partial summary judgment in favor of Merkos, affirming “[t]he PTO’s decision approving Merkos’s application for registration of the Kehot logo as a trademark.” 935 F.Supp.2d at 603. In so holding, the Court determined the PTO’s decision was supported by substantial evidence. However, the Court denied summary judgment on Merkos’s counterclaims for injunctive relief for trademark infringement of the logo under the Lanham Act and under New York law for unfair competition and dilution. It noted that Vaad’s use of the Kehot logo “appear[ed]” to create a likelihood of confusion, id. at 603 n. 2, but no such determination was necessary at the time because Vaad’s properly alleged affirmative defense of laches raised factual issues. Accordingly, over the course of four days this past October, the Court held a bench trial to determine whether Merkos could prove its counterclaims and, alternatively, whether Vaad was protected by laches.

[367]*367Vaad readily admits that it uses the Kehot logo on all of its publications. Mer-kos would have no objections if Vaad did not omit the appellation “of blessed memory” after references to the Rebbe’s name — which is contained in Merkos’s publications. Vaad does this consistent with its belief that the Rebbe is the Messiah and still lives. Merkos does not subscribe to this, and takes umbrage at the use of its logo by Vaad because it does not want it to be associated with Vaad’s messianic belief; hence, its wish to enjoin Vaad from using the Kehot logo.

While the dispute over the proper way to refer to the revered Rebbe Schneerson since his passing may not resonate in the secular world, it is of vital concern to the Chabad Lubavitch community. The Court respects the deeply held beliefs of the litigants, but must resolve their litigation in accordance with the secular law.

Based on the following findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52, the Court is constrained to deny Merkos’s claim for injunctive relief.

I

Shortly after Rabbi Joseph I. Schneer-sohn (the “Previous Rebbe”) relocated the headquarters of the Chabad Lubavitch movement from Eastern Europe to Crown Heights, Brooklyn, he founded the Kehot Publication Society (“Kehot”).1 A year later, he established Merkos to provide broader educational services to the Lubavitcher community. At its first meeting, in 1942, Merkos’s board of directors resolved to take over direction of Kehot, an unincorporated entity. The resolution reads as follows:

Whereas “KEHOT” has been engaged in the publication of literature of great value both in the religious and pedagogic field, and
Whereas it appears that such activity would well fit into the program of [MERKOS] and it would be for the best interests of [MERKOS] to assume and adopt the continuance of these publications hereafter, and
Whereas RABBI JOSEPH I. SCHNEERSOHN has signified his willingness to and does give and assign to [MERKOS] the right to use the trade names of “KEHOT” and “KEHOT PUBLICATION SOCIETY” in publishing, advertising and distributing religious and pedagogic literature,
Now, therefore, it is resolved that the proposal as set forth above be and the same hereby is approved and the Executive Committee is directed to carry out the terms of this resolution in all respects.

Merkos has since affixed the Kehot logo to almost all of its publications.

During the Previous Rebbe’s tenure, several entities apart from Kehot used the Kehot logo. Some, like Kehot, were part of Chabad Lubavitch’s umbrella organization; others were independent. All uses of the logo were contingent on the Previous Rebbe’s approval. This practice continued when the Rebbe succeeded the Previous Rebbe in 1951.

In 1958, and again in 1962, the independent Lubavitch Youth Organization published a weekly pamphlet containing the Rebbe’s sichos (talks or sermons). Yaad was formed in 1967 to centralize the publication and distribution of the Sichos. Indeed, Vaad’s full name means “Council for Distribution of the Sichos.”

[368]*368Thus, between 1967 and 1994, Vaad submitted its weekly pamphlets to the Rebbe. Upon receiving his approval, Vaad would publish and distribute the pamphlets under the Kehot logo. In addition, in 1979, the Rebbe put Vaad in charge of some of Kehot’s printing operations.

The death of the Rebbe in 1994 caused a leadership crisis in the Chabad Lubavitch community. Rabbi Yehuda Krinsky took over direction of Kehot and Merkos, but no one acceded to the position of Rebbe. Notwithstanding the Rebbe’s passing, Vaad did not include the “of blessed memory” appellation in its next publication.

Weeks after the Rebbe’s death, Rabbi Krinsky and Nissan Mindel, both members of Merkos’s board, sent a letter to Vaad. The letter chastised Vaad for omitting the appellation after the Rebbe’s name in its publications. Thereafter, Vaad published the Rebbe’s name with the appellation for approximately one year, but then resumed publishing without it. On July 13, 1995, Rabbi Krinsky and Mindel sent Vaad another letter that stated (translated from Hebrew):

We were stunned to see that you altered the idiomatic expression which was coined by the holy Rebbe, ... and you began printing the Likkuti Sichos by omitting, on the title page, the terms customarily applied after his holy name. We have already written to you a year ago, and we warned you that in such circumstance you should not play with these types of things. We fervently protest against this dreadful act, and it is a profanation of his [the Rebbe’s] honor, G-d save us, and it causes the opposite of disseminating his wellsprings, G-d forbid. It has already become publicly known that, thanks to your serious behavior, you have accomplished that a good many of our Jewish brethren refrain from studying the Sichos, G-d forbid.
We warn you that you immediately repair this in the next pamphlet.

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Bluebook (online)
156 F. Supp. 3d 363, 117 U.S.P.Q. 2d (BNA) 1722, 2016 U.S. Dist. LEXIS 5586, 2016 WL 183226, Counsel Stack Legal Research, https://law.counselstack.com/opinion/vaad-lhafotzas-sichos-inc-v-kehot-publication-society-nyed-2016.