Decided: May 19, 2015
The Fourth Circuit held that The Radiance Foundation (“Radiance”) neither infringed upon, nor diluted through tarnishment, the National Association for the Advancement of Colored People’s (“NAACP”) trademarks when Radiance authored an article entitled “NAACP: National Association for the Abortion of Colored People.” The Fourth Circuit vacated the district court’s injunction against Radiance, and remanded to the court with instructions to dismiss the NAACP’s counterclaims for trademark infringement and dilution.
NAACP is the nation’s largest and oldest civil rights organization, and owns several trademarks, including “NAACP,” and “National Association for the Advancement of Colored People.” Radiance is a non-profit which seeks to educate the public from a Christian perspective about issues impacting the African-American community. In January, 2013, Radiance’s founder wrote an article entitled “NAACP: National Association for the Abortion of Colored People,” which criticized the NAACP’s Image Awards, ties to Planned Parenthood, and its purported position on abortion. The article appeared on two Radiance websites, and one third-party site, in somewhat different formats. On both Radiance websites, the article appeared next to a link to donate to Radiance. On the third-party site, the NAACP’s Scales of Justice graphic was beneath the article headline. The NAACP sent a cease-and-desist letter to Radiance. Radiance brought a declaratory action, arguing that it had neither infringed upon, nor diluted, NAACP’s trademarks, and that its use of the marks was protected under the First Amendment. The NAACP counterclaimed for trademark infringement and trademark dilution. The district court found for the NAACP on all claims, and granted a permanent injunction prohibiting Radiance from using “National Association for the Abortion of Colored People” in a way that created the likelihood of confusion or dilution among consumers. Radiance appealed to the Fourth Circuit.
The Fourth Circuit began its analysis by noting the values behind the Lanham Act and the First Amendment. The Lanham Act, which protects trademarks from infringement and dilution, protects consumers from confusion in the marketplace. The First Amendment provides for free expression of ideas. To prevent the two from conflicting, for infringement to occur under the Lanham Act, the infringer must use the trademark holder’s mark “‘in connection with’ goods or services in a manner that is ‘likely to cause confusion’” as to the source of the goods or services. The Fourth Circuit first found that Radiance had not used the NAACP’s marks in connection with the sale, or offering for sale, of goods or services. The speech here, the court found, was more political or social than commercial in nature while the language of the Lanham Act statute requires something more like commercial speech for the mark to have been used “in connection with” the sale of goods or services. The court argued that, to extend Lanham Act protections against infringement to the trademark use here would bring the Act into conflict with the First Amendment, especially given that the definition of a good or service remains fuzzy. The Fourth Circuit also countered the district court’s argument that Radiance had used the mark in connection with its goods or services because the Radiance article appeared in a Google search for “NAACP,” thereby potentially sending users to Radiance’s article, instead of NAACP’s websites, and thus creating a connection to NAACP’s goods and services. The Fourth Circuit reasoned that the Lanham Act usually protects against use of the mark in connection with the infringer’s goods, not the trademark holder’s. The court further reasoned that Radiance used the trademark only in the article title, not in the website domain name, which previous case law had held to be enough for a mark to be used “in connection with” the sale of goods or services. The court found that Radiance did not use the marks in close enough connection with the sale, or offer for sale, of any of its own goods or services, since it only provided information on its websites, and the use of the marks was too attenuated from the donation seeking on the sites.
The Fourth Circuit also found that there was no likelihood of confusion from Radiance’s use of the NAACP’s trademarks. The district court found such confusion in part because surveys showed people thought NAACP stood for National Association for the Abortion of Colored People. The Fourth Circuit, however, reasoned that trademark protections protect against confusion about the source of goods, not the marks themselves, nor the position of the trademark holders on political or social issues. Further, the court thought it unlikely that consumers would think an article highly critical of the NAACP was from the NAACP. The court felt that this was particularly true given the satirical nature of the mark use, the fact that the domain names and webpage headings where the article appeared indicated organizations other than the NAACP, and the fact that the trademark was used in a title, which is generally supposed to be about article contents, not authorship.
Finally, the Fourth Circuit found that there was no dilution by tarnishment here. The Lanham Act prohibits using another’s mark in commerce in a way that dilutes the mark’s value by harming the reputation of the mark, but the Act provides explicit exceptions for: 1) fair use, 2) news reporting and news commentary, and 3) noncommercial use. The Fourth Circuit found that the NAACP showed a prima facie case for dilution by tarnishment, but Radiance’s use was both a fair use, and a noncommercial use. Radiance’s use was a fair use because it used the mark to critique the NAACP. Radiance’s use was noncommercial because the article was not an advertisement, and the possibility of donating to Radiance on the website where the article appeared was not sufficient to make the use commercial. Further, a reasonable consumer was unlikely to read the article as offering a transaction. On this basis, and upholding Radiance’s First Amendment right to free speech, the Fourth Circuit vacated the district court’s injunction against Radiance
Katherine H. Flynn