The Radiance Foundation, Inc. v. NAACP
Filing
PUBLISHED AUTHORED OPINION filed. Originating case number: 2:13-cv-00053-RAJ-DEM. [999585592]. [14-1568]
Appeal: 14-1568
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PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 14-1568
THE RADIANCE FOUNDATION, INC.; RYAN BOMBERGER,
Plaintiffs - Appellants,
v.
NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE,
Defendant - Appellee.
----------------------------------ELECTRONIC FRONTIER FOUNDATION; AMERICAN CIVIL LIBERTIES UNION
OF VIRGINIA; NATIONAL BLACK PRO-LIFE COALITION; WALTER B. HOYE,
II; DR. ALVEDA C. KING; DR. DAY GARDNER,
Amici Supporting Appellants.
_______________
Appeal from the United States District Court for the Eastern
District of Virginia, at Norfolk. Raymond A. Jackson, District
Judge. (2:13-cv-00053-RAJ-DEM)
Argued:
March 25, 2015
Decided:
May 19, 2015
Before WILKINSON and HARRIS, Circuit Judges, and DAVIS, Senior
Circuit Judge.
Vacated and remanded by published opinion.
Judge Wilkinson
wrote the opinion, in which Judge Harris and Senior Judge Davis
joined.
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ARGUED: Charles Manley Allen, GOODMAN, ALLEN & FILETTI, PLLC,
Glen Allen, Virginia, for Appellants. Pratik A. Shah, AKIN GUMP
STRAUSS HAUER & FELD LLP, Washington, D.C., for Appellee.
ON
BRIEF: William F. Demarest III, GOODMAN, ALLEN & FILETTI, PLLC,
Glen Allen, Virginia, for Appellants.
Anthony T. Pierce, Z.W.
Julius Chen, Matthew A. Scarola, AKIN GUMP STRAUSS HAUER & FELD
LLP, Washington, D.C., for Appellee.
Eugene Volokh, FIRST
AMENDMENT AMICUS BRIEF CLINIC, Mairead Dolan, Student, UCLA
SCHOOL OF LAW, Los Angeles, California, for Amici Electronic
Frontier Foundation and ACLU of Virginia.
Catherine W. Short,
LIFE LEGAL DEFENSE FOUNDATION, Ojai, California; Nikolas T.
Nikas, Dorinda C. Bordlee, BIOETHICS DEFENSE FUND, Metairie,
Louisiana, for Amici National Black Pro-Life Coalition, Walter
B. Hoye II, Dr. Alveda C. King, and Dr. Day Gardner.
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WILKINSON, Circuit Judge:
The
entitled
Radiance
“NAACP:
Foundation
National
published
Association
an
for
article
the
online
Abortion
of
Colored People” that criticized the NAACP’s stance on abortion.
In
response
to
a
cease-and-desist
letter
from
the
NAACP,
Radiance sought a declaratory judgment that it had not infringed
any
NAACP
trademarks.
The
NAACP
then
filed
counterclaims
alleging trademark infringement and dilution.
The Lanham Act protects against consumer confusion about
the source or sponsorship of goods or services. Persons may not
misappropriate trademarks to the detriment of consumers or of
the marks themselves. However, the Act’s reach is not unlimited.
To
find
Lanham
Act
violations
under
these
facts
risks
a
different form of infringement -- that of Radiance’s expressive
right to comment on social issues under the First Amendment.
Courts have taken care to avoid Lanham Act interpretations that
gratuitously court grave constitutional concerns, and we shall
do so here. We hold that Radiance is not liable for trademark
infringement or dilution of defendant’s marks by tarnishment. We
vacate the injunction against Radiance entered by the district
court
and
remand
with
instructions
counterclaims likewise be dismissed.
3
that
defendant’s
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I.
The
National
Association
for
the
Advancement
of
Colored
People, better known by its acronym “NAACP,” is this country’s
“oldest and largest civil rights organization,” Radiance Found.,
Inc. v. NAACP, 25 F. Supp. 3d 865, 872 (E.D. Va. 2014), and one
that
holds
a
place
of
honor
in
our
history.
It
champions
“political, educational, social, and economic equality of all
citizens” while working to eliminate racial and other forms of
prejudice within the United States. Id. Since its formation, it
has pursued these objectives not only through litigation but
also
through
community
outreach,
informational
services,
and
educational activities on issues of significance to the African
American community. See id. The NAACP owns several trademarks,
among
them
“NAACP”
(federally
registered)
and
“National
Association for the Advancement of Colored People.”
The Radiance Foundation, established by Ryan Bomberger, is
also
a
non-profit
influencing
American
the
organization
public
community.
about
Radiance
focused
issues
on
educating
impacting
addresses
social
the
issues
and
African
from
a
Christian perspective. It uses as its platform two websites,
TheRadianceFoundation.org and TooManyAborted.com, where it posts
articles
on
fatherlessness,
topics
and
such
the
as
impact
race
of
relations,
abortion
on
diversity,
the
black
community. Id. at 873. Radiance also runs a billboard campaign
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for
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TooManyAborted.com;
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individuals
may
sponsor
these
billboards, licensing the artwork from Radiance. In addition to
its
billboard
campaign,
Radiance
funds
its
endeavors
through
donations from visitors to its websites, which are facilitated
by “Donate” buttons on the webpages that link to a PayPal site.
In January 2013, Bomberger authored an article criticizing
the
NAACP’s
annual
Image
Awards,
entitled
“NAACP:
National
Association for the Abortion of Colored People.” See J.A. 869.
The piece lambasted the NAACP for sponsoring an awards event to
recognize Hollywood figures and products that Radiance alleged
defied Christian values and perpetuated racist stereotypes. The
article then criticized other of the NAACP’s public stances and
actions. It particularly targeted the NAACP’s ties to Planned
Parenthood and its position on abortion. Though the NAACP has
often claimed to be neutral on abortion, Radiance maintains that
the
NAACP’s
actions
actually
demonstrate
support
for
the
practice.
The article appeared on three websites: the two owned by
Radiance -- TheRadianceFoundation.com and TooManyAborted.com -and a third-party site called LifeNews.com. Though the text of
the article was identical across the sites, the headlines and
presentation
varied
slightly.
On
TheRadianceFoundation.com,
directly below the headline was an image of a TooManyAborted
billboard with the headline “NAACP: National Association for the
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Abortion
of
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Colored
TooManyAborted.com
People”
site
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repeated
posted
the
next
to
headline
it.
“The
Id.
The
National
Association for the Abortion of Colored People” with a graphic
below of a red box with the words “CIVIL WRONG” followed by the
modified NAACP name. Id. at 899. Adjacent to the article on both
pages was an orange button with “CLICK HERE TO GIVE ONE-TIME
GIFT
TO
THE
RADIANCE
FOUNDATION”
printed
around
the
word
“DONATE.” Id. at 869, 989. Finally on LifeNews.com, the thirdparty site, the NAACP’s Scales of Justice appeared as a graphic
underneath the headline. Id. at 101.
The
NAACP
sent
Radiance
a
cease-and-desist
letter
on
January 28, 2013, after a Google alert for the “NAACP” mark
unearthed the LifeNews.com article. Radiance thereupon brought a
declaratory action seeking a ruling that it had not infringed or
diluted any of the NAACP’s marks and that its use of the marks,
or similar ones, was protected under the First Amendment. The
NAACP counterclaimed for trademark infringement under 15 U.S.C.
§§ 1114(1) and 1125(a) and Virginia state law, and trademark
dilution under 15 U.S.C. § 1125(c).
After a bench trial, the district court found for the NAACP
on all counterclaims and denied declaratory relief to Radiance.
It held that Radiance had used the marks “in connection with”
goods and services and that its use of the “NAACP” and “National
Association for the Advancement of Colored People” marks, or a
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colorable
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imitation,
created
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a
likelihood
of
confusion
among
consumers. Radiance Found., 25 F. Supp. 3d at 878-79.
The district court also found that the use of the mark
created a likelihood of dilution by tarnishment by associating
the NAACP and its marks with a pro-abortion position. Id. at
880,
895.
qualify
The
as
court
fair
noncommercial
found
use,
use.
that
news
Radiance
Radiance’s
reporting,
was
actions
news
accordingly
failed
to
commentary,
or
deemed
ineligible
for those usages protected under the Lanham Act itself. Id. at
897-99.
The district court issued a permanent injunction “against
any use [by Radiance] of ‘National Association for the Abortion
of Colored People’ that creates a likelihood of confusion or
dilution.” Id. at 902. However, it declined to award any damages
or attorney’s fees, as it found the NAACP had failed to make the
case that they were warranted. Id. at 899-901.
Radiance now appeals. “We review a judgment following a
bench trial under a mixed standard of review -- factual findings
may be reversed only if clearly erroneous, while conclusions of
law, . . . are examined de novo.” Roanoke Cement Co. v. Falk
Corp., 413 F.3d 431, 433 (4th Cir. 2005). For the reasons given
below,
we
must
reverse.
The
NAACP
does
not
have
actionable
claims for trademark infringement here, and Radiance’s use of
the NAACP’s marks or colorable imitations falls squarely within
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the exceptions to trademark dilution specifically included in
the Lanham Act to avoid encroaching on free speech rights.
II.
A.
We
must
first
review
briefly
the
Lanham
Act
principles
relevant to this action. The Lanham Act’s provisions prohibiting
trademark infringement, 15 U.S.C. §§ 1114(1) and 1125(a), exist
to
protect
Qualitex
consumers
Co.
v.
from
Jacobson
confusion
Prods.
in
Co.,
the
514
marketplace.
U.S.
159,
See
162–64
(1995). Trademarks designate the source or affiliation of goods
and
services
in
order
to
provide
consumers
with
information
about those goods and services, allowing mark holders to build
and
benefit
from
the
reputation
of
their
brands.
Trademark
infringement laws limit the ability of others to use trademarks
or their colorable imitations in commerce, so that consumers may
rely on the marks to make purchasing decisions. See CPC Int’l,
Inc. v. Skippy Inc., 214 F.3d 456, 461 (4th Cir. 2000) (“The
basic
objectives
of
trademark
law
are
to
encourage
product
differentiation, promote the production of quality goods, and
provide
consumers
with
information
about
the
quality
of
goods.”).
Trademark protection, however, comes at a potential cost to
free expression. Much like advertising regulations that prohibit
using
false
or
misleading
information,
8
trademark
infringement
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laws
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restrict
interest
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speech
in
in
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order
protecting
to
promote
government’s
from
consumers
the
confusing
misappropriations of product identifications. However, Congress
“did
not
intend
Amendment
rights
for
of
trademark
critics
and
laws
to
impinge
commentators.”
the
First
Lamparello
v.
Falwell, 420 F.3d 309, 313 (4th Cir. 2005). The Lanham Act and
First Amendment may be in tension at times, but they are not in
conflict so long as the Act hews faithfully to the purposes for
which it was enacted. Mattel, Inc. v. MCA Records, Inc., 296
F.3d
894,
900
(9th
Cir.
2002).
The
risk
of
impinging
on
protected speech is much greater when trademarks serve not to
identify goods but rather to obstruct the conveyance of ideas,
criticism,
comparison,
and
social
commentary.
The
canon
of
constitutional avoidance in this area is thus not a device of
judicial
evasion
but
an
effort
to
reconcile
the
commercial
values protected by the Lanham Act and the democratic value of
expressive freedom. See Rogers v. Grimaldi, 875 F.2d 994, 998
(2d Cir. 1989); cf. Edward J. DeBartolo Corp. v. Fla. Gulf Coast
Bldg. & Constr. Trades Council, 485 U.S. 568, 575 (1988).
It is for this reason that an actionable trademark claim
does
not
simply
require
that
the
alleged
infringer
used
in
commerce the mark that the trademark holder possesses. It also
requires that the infringer’s use be “in connection with” goods
or services in a manner that is “likely to cause confusion”
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among
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consumers
as
to
the
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goods’
or
services’
source
or
sponsorship. 15 U.S.C. §§ 1114(1)(a) & 1125(a)(1); see People
for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359,
366
(4th
Cir.
2001)
(“PETA”);
United
We
Stand
Am.,
Inc.
v.
United We Stand, Am. New York, Inc., 128 F.3d 86, 91-92 (2d Cir.
1997)
(“It
poked
fun
at
the
plaintiff,
but
did
not
cause
consumer confusion as to source or origin.” (emphasis added)).
Use of a mark that does not satisfy these two criteria is not
trademark infringement. Lamparello, 420 F.3d at 313-14.
B.
The first element of trademark infringement at issue is
thus
whether
Radiance’s
use
of
the
NAACP’s
marks
was
“in
connection with the sale, offering for sale, distribution, or
advertising of any goods or services.” 15 U.S.C. § 1114(1)(a);
see also id. § 1125(a)(1) (requiring mark be used “in connection
with any goods or services”). The NAACP urges us to give this
requirement a “broad construction,” Appellee’s Br. at 18, but
that
construction
noncommercial
would
expressive
expose
and
to
liability
charitable
a
wide
array
of
activities.
Such
an
interpretation would push the Lanham Act close against a First
Amendment wall, which is incompatible with the statute’s purpose
and stretches the text beyond its breaking point. We decline to
reach so far.
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At least five of our sister circuits have interpreted this
element as protecting from liability all noncommercial uses of
marks. Farah v. Esquire Magazine, 736 F.3d 528, 541 (D.C. Cir.
2013); Utah Lighthouse Ministry v. Found. for Apologetic Info. &
Research, 527 F.3d 1045, 1052-54 (10th Cir. 2008); Bosley Med.
Inst., Inc. v. Kremer, 403 F.3d 672, 676-77 (9th Cir. 2005);
Taubman Co. v. Webfeats, 319 F.3d 770, 774 (6th Cir. 2003);
Porous Media Corp. v. Pall Corp., 173 F.3d 1109, 1120 (8th Cir.
1999). But see United We Stand, 128 F.3d at 89-90. We have not
taken
a
position
on
whether
“in
connection
with”
goods
or
services indicates a commercial use. Lamparello, 420 F.3d at
313-14.
At the very least, reading the “in connection with” element
to take in broad swaths of noncommercial speech would be an
“overextension” of the Lanham Act’s reach that would “intrude on
First
Amendment
Taubman,
319
values.”
F.3d
at
774
Rogers,
875
(stating
F.2d
that
at
the
998;
see
“Lanham
also
Act
is
constitutional because it only regulates commercial speech”). It
is true that neither of the Lanham Act’s infringement provisions
explicitly mentions commerciality. Lamparello, 420 F.3d at 314.
Still, this provision must mean something more than that the
mark
is
because
being
the
used
in
commerce
infringement
in
provisions
the
in
constitutional
§
1114(1)(a)
sense,
and
§
1125(a)(1) include a separate Commerce Clause hook. Bosley, 403
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F.3d at 677; Int’l Bancorp, LLC v. Societe des Bains de Mer et
du Cercle des Estrangers a Monaco, 329 F.3d 359, 363-64 (4th
Cir. 2003); United We Stand, 128 F.3d at 92-93.
Although this case does not require us to hold that the
commercial speech doctrine is in all respects synonymous with
the
“in
connection
with”
element,
we
think
that
doctrine
provides much the best guidance in applying the Act. The “in
connection
with”
description
of
element
in
different
fact
types
of
reads
very
commercial
much
like
actions:
a
“in
connection with the sale, offering for sale, distribution, or
advertising of any goods or services.” 15 U.S.C. § 1114(1)(a)
(emphasis added).
Use of a protected mark as part of “speech that does no
more than propose a commercial transaction” thus plainly falls
within the Lanham Act’s reach. United States v. United Foods,
Inc., 533 U.S. 405, 409 (2001). Courts also look to the factors
outlined in Bolger v. Youngs Drug Products Corp., 463 U.S. 60,
66-67 (1983): whether the speech is an advertisement; whether
the speech references a particular good or service; and whether
the speaker (the alleged infringer) has a demonstrated economic
motivation
for
his
speech.
Greater
Balt.
Ctr.
for
Pregnancy
Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 285 (4th Cir.
2013)
(en
banc).
These
are
not
12
exclusive
factors,
and
the
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presence
or
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absence
of
any
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of
them
does
not
necessitate
a
particular result.
In
the
context
of
trademark
infringement,
the
Act’s
purpose, as noted, is to protect consumers from misleading uses
of marks by competitors. Thus if in the context of a sale,
distribution,
identifier,
or
we
advertisement,
can
a
confidently
mark
state
is
used
that
as
the
a
use
source
is
“in
connection with” the activity. Even the Second Circuit, which
rejected noncommerciality as an invariable defense to Lanham Act
liability,
conceded
that
a
“crucial”
factor
is
that
the
infringer “us[ed] the Mark not as a commentary on its owner, but
instead as a source identifier.” United We Stand, 128 F.3d at
92. The danger of allowing the “in connection with” element to
suck
in
speech
strained
or
transactional
on
political
tangential
activity
and
social
association
should
issues
thus
with
be
a
through
some
commercial
evident.
Courts
or
have
uniformly understood that imposing liability under the Lanham
Act for such speech is rife with the First Amendment problems.
Finally,
connection
in
order
with”
goods
to
or
determine
services,
whether
we
the
must
use
is
consider
“in
what
qualifies as a good or service. The Lanham Act does not directly
define either term, but we can deduce their meaning from other
defined terms and common usage. A “good” is best understood as a
valuable product, physical or otherwise, that the consumer may
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herself employ. See 15 U.S.C. § 1127 (noting that a mark may be
used in commerce in relation to a good when placed on a good,
its container, its tag, or its associated documents); Black’s
Law
Dictionary
809
(10th
ed.
2014)
(defining
“goods”
as
“[t]hings that have value, whether tangible or not”). A service
is a more amorphous concept, “denot[ing] an intangible commodity
in the form of human effort, such as labor, skill, or advice.”
Black’s
Law
Dictionary
Lanham
Act
to
protect
1576.
Because
consumers
Congress
from
intended
confusion
in
the
the
marketplace, it is probable that the Act is meant to cover a
wide range of products, whether “goods” or “services.” See Yates
v. United States, 135 S. Ct. 1074, 1082 (2015) (“Ordinarily, a
word's usage accords with its dictionary definition. In law as
in life, however, the same words, placed in different contexts,
sometimes mean different things.”).
It is clear, therefore, that despite the need to reconcile
the reach of the Lanham Act with First Amendment values, “goods
or services” remains a broad and potentially fuzzy concept. That
is yet another reason why the “in connection with” language must
denote a real nexus with goods or services if the Act is not to
fatally collide with First Amendment principles.
C.
The second element in establishing Lanham Act liability is
whether the use of the trademark is “likely to cause confusion”
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among consumers regarding the source or sponsorship of the goods
or services. 15 U.S.C. §§ 1114(1)(a) & 1125(a)(1)(A). Here it is
important to remember that “trademark infringement protects only
against mistaken purchasing decisions and not against confusion
generally.” Lang v. Ret. Living Publ’g Co., 949 F.2d 576, 583
(2d Cir. 1991) (quotation marks omitted); see also Bosley, 403
F.3d at 677. That is because a trademark “only gives the right
to prohibit the use of it so far as to protect the owner’s good
will
against
the
sale
of
another’s
product
as
his.”
Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (emphasis
added).
This
court
frameworks
to
and
assess
others
the
have
employed
likelihood
of
any
number
confusion,
of
generally
balancing a slew of relevant factors. See, e.g., Pizzeria Uno
Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). This court
considers “the strength of the [trademark holder’s] mark, the
degree of similarity between the two marks, the similarity of
the goods they identify, the similarity of the facilities used
in
the
businesses,
[infringer’s]
the
intent,
and
similarity
the
of
presence
the
of
advertising,
actual
the
confusion,”
Anheuser-Busch, Inc. v. L. & L. Wings, Inc., 962 F.2d 316, 320
(4th Cir. 1992), as well as the “quality of the [infringer’s]
product,”
and
the
“sophistication
of
the
consuming
public,”
George & Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 393
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(4th Cir. 2009). These factors are not a “rigid formula” but
rather “only a guide,” Anheuser-Busch, 962 F.2d at 320, and each
factor may be more or less relevant or important for any given
case, Lamparello, 420 F.3d at 314-15.
In conducting such an inquiry, which is inherently factbound and context dependent, we must bear in mind the purpose
behind it -- preventing consumer confusion of the infringer’s
goods or services with those of the trademark holder’s. When the
infringer’s intent is something other than piggybacking off a
mark holder’s success by tricking consumers into purchasing his
goods instead, the other factors must be evaluated in light of
that intent and purpose. See Louis Vuitton Malletier S.A. v.
Haute Diggity Dog, LLC, 507 F.3d 252, 261 (4th Cir. 2007) (“An
intent
to
(quotations
parody
is
marks
not
an
omitted)).
intent
Although
to
confuse
finding
the
an
public.”
alternative
intent does not prevent us from applying the factors, it does
“influence[] the way in which [they] are applied.” Id.
Marks
compare
used
make
to
“the
parody,
satirize,
multi-factored
criticize,
inquiry
comment,
under
or
Pizzeria
Uno . . . at best awkward” and require that the use be assessed
in
that
context.
Anheuser-Busch,
962
F.2d
at
321
(quotation
marks omitted). For example, the strength of the mark and the
similarity between the marks often work in reverse for cases of
parody and satire as compared to a standard infringement case.
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Louis
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Vuitton,
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507
F.3d
at
Pg: 17 of 36
261.
“The
keystone
of
parody
is
imitation,” Anheuser-Busch, 962 F.2d at 321, and the similarity
-- with key differences -- between the original mark and the
parody may only enhance the effect of the latter and the “strong
mark’s fame and popularity [are] precisely the mechanism[s] by
which likelihood of confusion is avoided,” Louis Vuitton, 507
F.3d at 261.
As with the “in connection with” element, the “likelihood
of confusion” test, if misapplied, can implicate free speech
concerns.
When
the
“use
of
the
trademark
does
not
imply
sponsorship or endorsement of the product because the mark is
used only to describe the thing, rather than to identify its
source,” restricting speech does not serve the purpose of the
Lanham Act. New Kids on the Block v. News Am. Publ’g, Inc., 971
F.2d 302, 306-08 (9th Cir. 1992). Indeed, criticism or parody of
a mark holder would be difficult indeed without using the mark.
Id. Trademark protections exist neither to allow companies to
protect themselves from criticism nor to permit them to “control
language.” Skippy, 214 F.3d at 462 (quoting Mark A. Lemley, The
Modern Lanham Act and the Death of Common Sense, 108 Yale L.J.
1687, 1710-11 (1999)). Even some amount of “actual confusion”
must still be weighed against the interest in a less fettered
marketplace of social issues speech. See Rogers, 875 F.2d at
1001.
17
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III.
In applying the above principles, we think the district
court made several errors. Those mistakes extended the Lanham
Act beyond the purposes it was intended to serve.
A.
In finding that Radiance’s use of the NAACP’s marks was “in
connection with” goods or services, the district court erred in
several
respects.
Radiance
article
To
begin,
appeared
the
in
a
court
held
Google
that
search
because
for
the
the
term
“NAACP,” it diverted “Internet users to Radiance’s article as
opposed
to
the
NAACP’s
websites,”
which
thereby
created
a
connection to the NAACP’s goods and services. Radiance Found.,
Inc. v. NAACP, 25 F. Supp. 3d 865, 884 (E.D. Va. 2014). But
typically the use of the mark has to be in connection with the
infringer’s goods or services, not the trademark holder’s. See
Utah
Lighthouse
Ministry
v.
Found.
for
Apologetic
Info.
&
Research, 527 F.3d 1045, 1053-54 (10th Cir. 2008) (stating that
“the defendant in a trademark infringement . . . case must use
the mark in connection with the goods or services of a competing
producer, not merely to make a comment on the trademark owner's
goods or services”).
If the general rule was that the use of the mark merely had
to
be
in
services,
connection
then
even
with
the
the
most
trademark
offhand
18
holder’s
mention
of
a
goods
or
trademark
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holder’s mark could potentially satisfy the “in connection with”
requirement. That interpretation would expand the requirement to
the point that it would equal or surpass the scope of the Lanham
Act’s “in commerce” jurisdictional element. This would not only
make the jurisdictional element superfluous, but would hamper
the
ability
of
the
“in
connection
with”
requirement
to
hold
Lanham Act infractions within First Amendment limits.
In People for the Ethical Treatment of Animals v. Doughney,
we stated that an infringer “need only have prevented users from
obtaining or using [the trademark holder’s] goods or services,
or need only have connected the [infringing] website to other’s
goods or services” in order to satisfy the “in connection with”
requirement. 263 F.3d 359, 365 (4th Cir. 2001). But that rule
applies specifically where the infringer has used the trademark
holder’s
mark
Radiance’s
in
a
websites
domain
used
an
name.
Id.
NAACP
at
mark
365-66.
in
its
Neither
domain
of
name.
Rather, Radiance used the NAACP’s marks only in the title and
body
of
an
article
criticizing
the
NAACP.
Nothing
in
PETA
indicates that the use of a mark in the course of disseminating
such an idea is on that account sufficient to establish the
requisite relationship to goods or services. PETA simply does
not govern the application of the “in connection with” element
in this case.
19
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The district court proceeded to find that Radiance’s use of
the NAACP’s marks was also in connection with Radiance’s goods
or services. Radiance Found., 25 F. Supp. 3d at 884-85. But the
court’s
analysis
failed
to
demonstrate
a
sufficient
nexus
between the specific use of the marks and the sale, offer for
sale,
distribution,
services
that
the
or
advertisement
court
invoked.
of
The
any
court
of
the
first
goods
found
or
that
there was a sufficient nexus “with Radiance’s own information
services”
because
Radiance
“provided
information”
on
its
website. Id. at 884. That ruling, however, neuters the First
Amendment. The provision of mere “information services” without
any commercial or transactional component is speech -- nothing
more.
In the alternative, the court held that Radiance’s use of
the
NAACP’s
marks
was
in
connection
with
goods
or
services,
because the use was “part of social commentary or criticism for
which they solicit donations and sponsorship.” Id. The NAACP
echoes the district court, arguing that the transactional nature
of
the
billboard
campaign
and
Radiance’s
fundraising
efforts
place Radiance’s use of the marks “comfortably within” the reach
of the “in connection with” element. Appellee’s Br. at 24-26.
We
need
not
address
this
point
with
absolute
pronouncements. Suffice it to say that the specific use of the
marks
at
issue
here
was
too
20
attenuated
from
the
donation
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solicitation and the billboard campaign to support Lanham Act
liability.
Although
present
on
the
article
page,
the
Donate
button was off to the side and did not itself use the NAACP’s
marks in any way. The billboard campaign was displayed on a
different page altogether. A visitor likely would not perceive
the
use
of
the
NAACP’s
marks
in
the
article
as
being
in
connection with those transactional components of the website.
It is important not to lose perspective. The article was just
one
piece
of
comprised
of
materials.
That
each
Radiance
articles,
the
website’s
videos,
protected
marks
and
content,
which
multimedia
appear
was
advocacy
somewhere
in
the
content of a website that includes transactional components is
not alone enough to satisfy the “in connection with” element. To
say it was would come too close to an absolute rule that any
social issues commentary with any transactional component in the
neighborhood
enhanced
the
commentator’s
risk
of
Lanham
Act
liability.
The Supreme Court has warned “that charitable appeals for
funds . . . involve a variety of speech interests . . . that are
within
the
protection
of
the
First
Amendment.”
Vill.
of
Schaumburg v. Citizens for a Better Env't, 444 U.S. 620, 632
(1980). Such solicitation, the Court stated, is not a “variety
of purely commercial speech.” Id. Courts are thus well-advised
to tread cautiously when a trademark holder invokes the Lanham
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Pg: 22 of 36
Act against an alleged non-profit infringer whose use of the
trademark
requests
holder’s
for
marks
money.
may
Again,
be
this
only
is
tenuously
not
to
say
related
that
in
to
all
instances a solicitation by a non-profit is immune from Lanham
Act liability. A solicitation may satisfy the “in connection
with” element if the trademark holder demonstrates a sufficient
nexus between the unauthorized use of the protected mark and
clear transactional activity. Such a nexus may be present, for
example, where the protected mark seems to denote the recipient
of the donation. However, where, as here, the solicitations are
not closely related to the specific uses of the protected marks,
we are compelled to conclude that the district court erred in
ruling that the “in connection element” was met.
B.
The district court likewise considered the likelihood of
confusion from Radiance’s use of the marks. First and foremost,
it based its finding in great part on whether consumers thought
“NAACP” in fact stood for “National Association for the Abortion
of Colored People.” Radiance Found., 25 F. Supp. 3d at 887-89
(relying on survey evidence). Trademark infringement provisions
do
not
because
protect
marks
against
are
not
confusion
goods
or
about
the
services
marks
but
themselves
instruments
to
identify goods and services. Louis Vuitton Malletier S.A. v.
Haute Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir. 2007) (“The
22
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Pg: 23 of 36
misspellings pointed out by LVM [in the Vuitton name] are far
more likely in this context to indicate confusion over how to
spell the product name than any confusion over the source or
sponsorship of the ‘Chewy Vuiton’ dog toys.”). Thus confusion
about what a particular trademark says or looks like is not
relevant for infringement claims. We may certainly account for
similarities
between
the
trademark
holder’s
and
infringer’s
marks in the likelihood of confusion analysis, but only in the
context of how those similarities create confusion about the
source of any products the marks identify.
Likewise, trademark infringement is not designed to protect
mark holders from consumer confusion about their positions on
political or social issues. The evidence of “actual confusion”
relied on by the district court consisted of phone calls to the
NAACP
by
abortion.
people
who
Radiance
“[I]ndignation
is
took
issue
Found.,
25
not
with
F.
confusion,”
the
Supp.
Girl
NAACP
3d
Scouts
supporting
at
of
888-89.
U.S.
v.
Personality Posters, Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y.
1969), at least not as pertains to trademark infringement, and
at
best
the
calls
demonstrated
confusion
as
to
the
NAACP’s
policy positions rather than any good or service. Policy stances
are neither goods nor services, though the means of conveying
them may be.
23
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Political
discourse
is
Pg: 24 of 36
the
grist
of
the
mill
in
the
marketplace of ideas. It may be that the only -- but also the
best -- remedy available to a trademark holder is to engage in
responsive speech. For even where a speaker lies, “more accurate
information will normally counteract the lie.” United States v.
Alvarez, 132 S. Ct. 2537, 2556 (2012) (Breyer, J., concurring in
the judgment). The NAACP is a renowned civil rights organization
with numerous mechanisms for connecting with its membership and
the
public.
megaphones
Organizations
all
their
of
own.
its
size
“Actual
and
confusion”
stature
as
to
possess
a
non-
profit’s mission, tenets, and beliefs is commonplace, but that
does
not
transform
the
Lanham
Act
into
an
instrument
for
chilling or silencing the speech of those who disagree with or
misunderstand a mark holder’s positions or views. See Rogers v.
Grimaldi, 875 F.2d 994, 1001 (2d Cir. 1989).
The district court also concluded that some consumers might
be
confused
about
an
affiliation
between
the
authors
of
the
article and the NAACP. Radiance Found., 25 F. Supp. 3d at 889.
But it is not immediately apparent how someone would confuse an
article which is strongly critical of an organization with the
organization itself. The mark in this case was used primarily to
identify
the
resembling
employing
a
a
NAACP
as
the
descriptive
modified
or
object
version
of
nominative
of
24
the
Radiance’s
fair
name.
use
criticism,
albeit
Admittedly,
by
the
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Pg: 25 of 36
attention span on the Internet may not be long, but the briefest
familiarity with the article would quickly create the impression
the author was no friend of the NAACP. Indeed, in just the first
two lines, the piece refers to the NAACP as an “out-of-touch
liberal organization” and accuses its Image Awards of honoring
“black
imagery
perpetually
869.
churned
sexist,
Intemperate
risks
confusion,
thereby
from
adverse
violent
and
actionable
out
worse
creating
by
often
and
pornographic
as
the
permitting
assessments.
the
racist,
Hollywood.”
commentary
paradox
that
companies
to
Indeed,
anti-Christian,
“‘[m]uch
is,
holding
criticism
shield
useful
J.A.
it
equals
themselves
social
and
commercial discourse would be all but impossible if speakers
were under threat of an infringement lawsuit every time they
made reference to a person, company or product by using its
trademark.’” CPC Int’l, Inc. v. Skippy Inc., 214 F.3d 456, 462
(4th Cir. 2000) (quoting New Kids on the Block v. News Am.
Publ’g, Inc., 971 F.2d 302, 307 (9th Cir. 1992)).
It
remains
essential
in
any
analysis
of
confusion
to
consider fully the purpose with which the mark was being used.
The trial court did entertain the possibility of parody, but
once it found that Radiance had not engaged in a successful
parody, it ended its inquiry there. Radiance Found., 25 F. Supp.
3d
at
891-93.
If
not
quite
parody,
the
use
of
“National
Association for the Abortion of Colored People” in this context
25
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may
be
Filed: 05/19/2015
more
akin
Pg: 26 of 36
to
satire,
which
“works
by
distort[ing] . . . the familiar with the pretense of reality in
order
to
convey
an
underlying
critical
message.”
Farah
v.
Esquire Magazine, 736 F.3d 528, 537 (D.C. Cir. 2013) (quotation
marks
omitted).
Whatever
the
label
affixed
to
the
article,
Radiance’s twist on the famous moniker follows in the same vein
as articles that refer to the NRA as the “National Republican
Association” or the ACLU as the “Anti-Christian Lawyers Union.”
Amicus Br. of Elec. Frontier Found. & ACLU of Va. at 3-4, 6-7.
Biting,
surely;
nonetheless
distortive,
effective
at
certainly;
conveying
Radiance’s
sharply
what
it
ploy
was
was
that
Radiance wished to say. The implications for the likelihood of
confusion factors are thus obvious: parody or satire or critical
opinion generally may be more effective if the mark is strong
and
the
satirical
or
critical
version
is
similar
to
the
original. The critical message conveyed by the satirical mark
itself
and
in
the
commentary
that
follows
ensures
that
no
confusion about the source of the commentary will last, if in
fact it is generated at all.
It is important moreover to pay sufficient attention to the
full context in which the mark was used, which diminishes the
likelihood of confusion about source even further. The domain
names and webpage headings clearly denote other organizations:
The Radiance Foundation or TooManyAborted. For each site, this
26
Appeal: 14-1568
post
Doc: 38
was
one
Filed: 05/19/2015
of
dozens
of
Pg: 27 of 36
articles
on
social
and
political
issues.
Suppose, however, a viewer caught no more than the title of
the article: “NAACP: National Association for the Abortion of
Colored People.” The claim against Radiance would still not lie.
Titles, as part of expressive works, “require[] more protection
than the labeling of ordinary” goods. Rogers, 875 F.2d at 998.
For consumers understand and expect titles to pertain to the
contents of the underlying work rather than authorship or the
publisher. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894,
902 (9th Cir. 2002); Rogers, 875 F.2d at 999-1000. Provided the
title is connected to and not misleading about the contents and
does not use the mark in a way that clearly suggests authorship,
see Rogers, 875 F.2d at 999, use of a mark in a title will
generally not result in the type of consumer confusion necessary
to support infringement claims. In this case, the title related
to
and
conveyed
the
subject
of
the
article:
the
NAACP
and
Radiance’s views of its alleged stance on abortion. The use of
the satirical modification of the true NAACP name was designed,
as many titles are, to be eye-catching and provocative in a
manner that induces the reader to continue on. We cannot find
that use of the NAACP marks in the title of the Radiance article
created a likelihood of confusion as to the piece’s authorship
or affiliation.
27
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Pg: 28 of 36
We have identified individual difficulties with appellee’s
position,
but
it
is
well
to
understand
the
matter
in
its
totality. The trial court found that using marks in a highly
critical
actions
article
that
constituted
lambasts
trademark
the
NAACP
for
infringement
its
views
because
the
and
site
solicits financial support for its activities, albeit attenuated
from the use of the mark, and some consumers may be confused
about the NAACP’s true name and political positions. We need not
go so far as to say that social commentary solicitations can
never be the subject of a valid infringement claim in order to
conclude that it will not be infringing so long as the use of
the mark does not create confusion as to source, sponsorship, or
affiliation. Any other holding would severely restrict all kinds
of speakers from criticizing all manner of corporate positions
and
activities
and
propel
the
Lanham
Act
into
treacherous
constitutional terrain.
IV.
The district court further held that Radiance diluted the
“NAACP” and “National Association for the Advancement of Colored
People” trademarks by tarnishing them in violation of 15 U.S.C.
§ 1125(c). Radiance Found., Inc. v. NAACP, 25 F. Supp. 3d 865,
899 (E.D. Va. 2014). We respectfully disagree. Radiance’s use of
the
marks
was
undeniably
to
criticize
28
the
NAACP’s
perceived
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Pg: 29 of 36
position on abortion, thus falling squarely within the statute’s
explicit exclusions. See 15 U.S.C. § 1125(c)(3).
A.
Whereas the law of trademark infringement is “motivated by
an
interest
product’s
in
protecting
source,
the
law
consumers”
of
from
dilution
confusion
defends
the
as
to
a
trademark
itself. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 429
(2003); see also Nissan Motor Co. v. Nissan Computer Corp., 378
F.3d 1002, 1012 (9th Cir. 2004) (“The point of dilution law is
to protect the owner’s investment in his mark.”). Specifically,
the law allows “the owner of a famous mark that is distinctive”
to seek an injunction where another person’s use of a mark “is
likely to cause dilution by blurring or dilution by tarnishment
of the famous mark, regardless of the presence or absence of
actual
or
likely
confusion,
of
competition,
or
of
actual
economic injury.” 15 U.S.C. § 1125(c)(1). Dilution by blurring
is an “association arising from the similarity between a mark or
trade name and a famous mark that impairs the distinctiveness of
the famous mark.” Id. § 1125(c)(2)(B). By contrast, dilution by
tarnishment -- the theory at issue here -- is an association
“that
harms
the
reputation
of
the
famous
mark.”
Id.
§ 1125(c)(2)(C).
To state a prima facie claim of dilution by tarnishment,
therefore, the NAACP must satisfy four elements:
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(1) that [it] owns a famous mark that is distinctive;
(2) that [Radiance] has commenced using a mark in
commerce that allegedly is diluting the famous mark;
(3) that a similarity between [the diluter’s] mark and
the famous mark gives rise to an association between
the marks; and
(4) that the association is likely . . . to harm the
reputation of the famous mark.
Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 168 (4th Cir.
2012) (quoting Louis Vuitton Malletier S.A. v. Haute Diggity
Dog, LLC, 507 F.3d 252, 264-65 (4th Cir. 2007)).
The first three elements are met here: the marks Radiance
used in commerce were either identical or highly similar to the
NAACP’s undoubtedly famous marks. As for the fourth element,
harming a famous mark’s reputation means “creat[ing] consumer
aversion to the famous brand.” Rosetta Stone, 676 F.3d at 167.
Such aversion may be shown when the famous mark is “linked to
products of shoddy quality, or is portrayed in an unwholesome or
unsavory context.” Id. (quoting Scott Fetzer Co. v. House of
Vacuums
Inc.,
381
F.3d
477,
489
(5th
Cir.
2004));
see
also
Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 111 (2d Cir. 2010).
Radiance has not challenged the district court’s finding that
the article was likely to harm the NAACP’s marks. Indeed, the
whole
point
of
the
article
was
to
criticize
the
NAACP,
and
Radiance attempted to accomplish that goal in part by playing
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Pg: 31 of 36
off the NAACP’s name. The NAACP thus established a prima facie
case of dilution by tarnishment.
B.
However, that does not end the inquiry. The law provides
three broad, overlapping categories within which any use of a
famous mark, even if likely to cause harm or blurring, is not
actionable: fair use; news reporting and news commentary; and
noncommercial use. 15 U.S.C. § 1125(c)(3). Radiance asserts that
its
use
these
of
the
NAACP’s
affirmative
speech
falls
exclusions,
defenses.
plainly
we
marks
have
Because
within
no
qualifies
the
need
we
fair
to
for
protection
hold
and
that
under
Radiance’s
noncommercial
address
Radiance’s
use
“news
reporting and news commentary” defense.
The
first
nominative
connection
or
exclusion
covers
descriptive
fair
with,”
among
“[a]ny
use,”
other
fair
and
things,
use, including
“including
use
“identifying
a
in
and
parodying, criticizing, or commenting upon the famous mark owner
or
the
goods
or
§ 1125(c)(3)(A)(ii)
services
(emphasis
of
the
added).
famous
A
mark
owner.”
descriptive
fair
Id.
use
“applies when the [dilution] defendant is using a trademark in
its primary, descriptive sense to describe the defendant's goods
or services,” whereas “nominative fair use comes into play when
the defendant uses the famous mark to identify or compare the
trademark
owner's
product.”
Rosetta
31
Stone,
676
F.3d
at
169
Appeal: 14-1568
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(quotation
source
Filed: 05/19/2015
marks
for
the
omitted).
[user’s]
§ 1125(c)(3)(A).
That
is,
Pg: 32 of 36
No
use
own
may
goods
the
be
or
fair
“a
designation
services.”
use
exclusion
15
of
U.S.C.
does
not
provide a safe harbor for one who uses another’s famous mark as
a trademark. See Louis Vuitton, 507 F.3d at 266. Finally, good
faith
is
a
“common
component”
of
fair
use
analysis.
Rosetta
Stone, 676 F.3d at 169-70.
The NAACP, as the district court recognized, is an advocacy
organization. See Radiance Found., 25 F. Supp. 3d at 872. As
such,
stated
it
takes
positions
mission;
the
on
public
organization
issues
exists
on
in
behalf
part
to
of
its
be
for
things. The Radiance article used the NAACP’s marks to comment
upon what it sees as the policies the NAACP supports or does not
support, as the case may be. Within the context of the article,
the use of the NAACP’s famous marks unquestionably framed and
referenced the NAACP’s policy positions, or at least Radiance’s
view
of
referred
what
to
those
the
positions
NAACP’s
are.
purported
The
support
article
for
repeatedly
abortion
and
Planned Parenthood, using sexual and other graphic metaphors to
hammer the point home. Even if we were to take the title out of
context and view it separately from the rest of the article, the
use was still nominative, because it explicitly referred to what
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the
Doc: 38
author
Filed: 05/19/2015
believes
the
NAACP
Pg: 33 of 36
stands
for:
the
abortion
of
African American children. *
The
referring
district
to
the
court
NAACP
as
also
the
reiterated
“National
its
belief
Association
for
that
the
Abortion of Colored People” is not a parody. Id. at 897. The
fair use defense, however, is not limited to parody; it also
embraces uses that “criticiz[e]” or “comment[] upon” the NAACP
or its services. 15 U.S.C. § 1125(c)(3)(A)(ii). Regardless of
whether Radiance’s use of the NAACP’s marks legally qualifies as
parody, it is abundantly clear that Radiance used “NAACP” in
conjunction
with
“National
Association
for
the
Abortion
of
Colored People” to comment upon and criticize the NAACP for its
perceived position on abortion and other issues affecting the
African American community. “The National Association for the
Abortion of Colored People has no moral ground to stand upon,”
the article goes, “just quick sand oozing with the blood of
those most discriminated against. The NAACP’s covert and overt
support of Planned Parenthood negates any other human rights
they purport to defend.” J.A. 870. It is difficult to imagine
what the article is if not criticism. We cannot say, and the
*
Radiance does not assert that the use was descriptive fair
use, nor did the district court comment upon a descriptive
theory. We thus do not consider any argument that the use here
was descriptive and fair.
33
Appeal: 14-1568
Doc: 38
district
court
Filed: 05/19/2015
erred
in
Pg: 34 of 36
holding,
that
Radiance’s
use
of
the
NAACP’s famous marks was not a fair use.
C.
The final exclusion protects “[a]ny noncommercial use of a
mark.”
15
U.S.C.
refers
to
the
Lamparello
v.
§ 1125(c)(3)(C).
First
Amendment
Falwell,
420
The
term
commercial
F.3d
309,
313
“noncommercial”
speech
(4th
doctrine.
Cir.
2005).
Commercial speech is “‘speech that does no more than propose a
commercial transaction.’” Harris v. Quinn, 134 S. Ct. 2618, 2639
(2014) (quoting United States v. United Foods, Inc., 533 U.S.
405,
409
(2001));
see
also
Greater
Balt.
Ctr.
for
Pregnancy
Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 284 (4th Cir.
2013) (en banc). In determining whether speech is commercial, we
consider
several
factors:
(1)
whether
the
speech
is
an
advertisement; (2) whether speech refers to specific products or
services; (3) whether the speaker has an economic motivation for
the speech; and (4)”the viewpoint of the listener,” i.e. whether
the
listener
would
perceive
the
speech
as
proposing
a
transaction. Greater Balt., 721 F.3d at 285-86. The factors are
cumulative, but, again, the absence of any particular element
does not necessarily render the speech noncommercial. Id.
The
district
court
held
that
because
Radiance
“offered
various opportunities for visitors . . . to donate to Radiance,
pay
to
sponsor
billboards,
secure
34
license
content,
or
erect
Appeal: 14-1568
Doc: 38
Filed: 05/19/2015
Pg: 35 of 36
state-specific webpages for a fee,” the use of the NAACP’s marks
was commercial. Radiance Found., 25 F. Supp. 3d at 899. We think
however, that the above factors mitigate against a finding of
commerciality.
advertisement.
The
Nowhere
article
in
in
the
contention
piece
did
it
was
offer
not
the
an
reader
anything for sale. The article did not even mention Radiance’s
services. The only point “Radiance” even appeared in the article
was as part of a passing reference to conservatives that the
NAACP purportedly targets. The fact that the websites provided
opportunities
to
engage
in
financial
transactions
does
not
demonstrate that the article itself was commercial. The key here
is the viewpoint of a reasonable reader. A person navigating to
the article, even if through a Google search for “NAACP,” is
highly unlikely to read the article as advertising a Radiance
service or proposing a transaction of any kind.
Trademark law in general and dilution in particular are not
proper vehicles for combatting speech with which one does not
agree. Trademarks do not give their holders under the rubric of
dilution the rights to stymie criticism. Criticism of large and
powerful
entities
in
particular
is
vital
to
the
democratic
function. Under appellee’s view, many social commentators and
websites would find themselves victims of litigation aimed at
silencing or altering their message, because, as noted, “it is
often virtually impossible to refer to a particular product for
35
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Doc: 38
Filed: 05/19/2015
Pg: 36 of 36
purposes of comparison, criticism, point of reference or any
other such purpose without using the mark.” New Kids on the
Block v. News Am. Publ’g, Inc., 971 F.2d 302, 306 (9th Cir.
1992). The article in this case was harsh. But that did not
forfeit
its
author’s
First
Amendment
liberties.
The
most
scathing speech and the most disputable commentary are also the
ones most likely to draw their intended targets’ ire and thereby
attract Lanham Act litigation. It is for this reason that law
does not leave such speech without protection.
V.
In sum, and for the aforementioned reasons, the plaintiff’s
expression
in
trademark
rights.
injunction
and
no
way
We
remand
infringed
hereby
with
upon
vacate
directions
or
diluted
the
that
defendant’s
district
the
court’s
defendant’s
Lanham Act counterclaims be dismissed.
VACATED AND REMANDED
36
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