Filed: May 19, 2015
Latest Update: Mar. 02, 2020
Summary: 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 Distr
Summary: 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 Distri..
More
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.
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.
2
WILKINSON, Circuit Judge:
The Radiance Foundation published an article online
entitled “NAACP: National Association for the 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 that defendant’s
counterclaims likewise be dismissed.
3
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 organization focused on educating and
influencing the public about issues impacting the African
American community. Radiance addresses social issues from a
Christian perspective. It uses as its platform two websites,
TheRadianceFoundation.org and TooManyAborted.com, where it posts
articles on topics such as race relations, diversity,
fatherlessness, and the impact of abortion on the black
community. Id. at 873. Radiance also runs a billboard campaign
4
for TooManyAborted.com; 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
5
Abortion of Colored People” repeated next to it. Id. The
TooManyAborted.com site posted the headline “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 third-
party 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
6
colorable imitation, created 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. The court found that Radiance’s actions failed to
qualify as fair use, news reporting, news commentary, or
noncommercial use. Radiance was accordingly 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
7
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 consumers from confusion in the marketplace. See
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 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, trademark infringement
8
laws restrict speech in order to promote the government’s
interest in protecting consumers from confusing
misappropriations of product identifications. However, Congress
“did not intend for trademark laws to impinge the First
Amendment rights of critics and commentators.” 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”
9
among consumers as to the 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 would expose to liability a wide array of
noncommercial expressive and charitable 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.
10
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 values.” Rogers, 875 F.2d at 998; see also
Taubman, 319 F.3d at 774 (stating that the “Lanham 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 being used in commerce in the constitutional sense,
because the infringement provisions in § 1114(1)(a) and §
1125(a)(1) include a separate Commerce Clause hook. Bosley,
403
11
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” element in fact reads very much like a
description of different types of commercial actions: “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 exclusive factors, and the
12
presence or absence of any 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, or advertisement, a mark is used as a source
identifier, we can confidently state that the use 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 on political and social issues through some
strained or tangential association with a commercial or
transactional activity should thus be evident. Courts have
uniformly understood that imposing liability under the Lanham
Act for such speech is rife with the First Amendment problems.
Finally, in order to determine whether the use is “in
connection with” goods or services, we must consider 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
13
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 1576. Because Congress intended the
Lanham Act to protect consumers from confusion in 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”
14
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 and others have employed any number of
frameworks to assess the likelihood of confusion, 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, the similarity of the advertising, the
[infringer’s] intent, and the presence of actual 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
15
(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 fact-
bound 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 parody is not an intent to confuse the public.”
(quotations marks omitted)). Although finding an alternative
intent does not prevent us from applying the factors, it does
“influence[] the way in which [they] are applied.”
Id.
Marks used to parody, satirize, criticize, comment, or
compare make “the multi-factored inquiry under 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.
16
Louis Vuitton, 507 F.3d at 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
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. To begin, the court held that because the
Radiance article appeared in a Google search for 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 connection with the trademark holder’s goods or
services, then even the most offhand mention of a trademark
18
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 in a domain name.
Id. at 365-66. Neither of
Radiance’s websites used an NAACP mark in its domain 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
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, or advertisement of any of the goods or
services that the court invoked. The court first found 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 attenuated from the donation
20
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 each Radiance website’s content, which was
comprised of articles, videos, and multimedia advocacy
materials. That the protected marks appear 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
21
Act against an alleged non-profit infringer whose use of the
trademark holder’s marks may be only tenuously related to
requests for money. Again, this is not to say that in 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 protect against confusion about the marks themselves
because marks are not goods or services but 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
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 people who took issue with the NAACP supporting
abortion. Radiance Found., 25 F. Supp. 3d at 888-89.
“[I]ndignation is not confusion,” Girl Scouts of 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
Political discourse is 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. Organizations of its size and stature possess
megaphones all their own. “Actual confusion” as to 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 NAACP as the object of Radiance’s criticism,
resembling a descriptive or nominative fair use albeit by
employing a modified version of the name. Admittedly, the
24
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 churned out by often racist, anti-Christian,
perpetually sexist, violent and pornographic Hollywood.” J.A.
869. Intemperate and worse as the commentary is, holding it
actionable risks creating the paradox that criticism equals
confusion, thereby permitting companies to shield themselves
from adverse assessments. Indeed, “‘[m]uch useful 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
may be more akin 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; distortive, certainly; Radiance’s ploy was
nonetheless effective at conveying sharply what it 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
post was one of dozens of 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
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 article that lambasts the NAACP for its views and
actions constituted trademark infringement because the 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 the NAACP’s perceived
28
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 in protecting consumers” from confusion as to a
product’s source, the law of dilution defends the 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:
29
(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
30
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 of the NAACP’s marks qualifies for protection under
these affirmative defenses. Because we hold that Radiance’s
speech falls plainly within the fair and noncommercial use
exclusions, we have no need to address Radiance’s “news
reporting and news commentary” defense.
The first exclusion covers “[a]ny fair use, including a
nominative or descriptive fair use,” and “including use in
connection with,” among other things, “identifying and
parodying, criticizing, or commenting upon the famous mark owner
or the goods or services of the famous mark owner.” Id.
§ 1125(c)(3)(A)(ii) (emphasis added). A descriptive fair 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
Stone, 676 F.3d at 169
31
(quotation marks omitted). No use may be “a designation of
source for the [user’s] own goods or services.” 15 U.S.C.
§ 1125(c)(3)(A). That is, the fair use exclusion 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, it takes positions on public issues on behalf of its
stated mission; the organization exists in part to 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 what those positions are. The article repeatedly
referred to the NAACP’s purported support for 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
32
the author believes the NAACP stands for: the abortion of
African American children. *
The district court also reiterated its belief that
referring to the NAACP as the “National Association for 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
district court erred in 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. § 1125(c)(3)(C). The term “noncommercial”
refers to the First Amendment commercial speech doctrine.
Lamparello v. Falwell, 420 F.3d 309, 313 (4th 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 license content, or erect
34
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. The article in contention was not an
advertisement. Nowhere in the piece did it offer the 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
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 no way infringed upon or diluted defendant’s
trademark rights. We hereby vacate the district court’s
injunction and remand with directions that the defendant’s
Lanham Act counterclaims be dismissed.
VACATED AND REMANDED
36
