4th Circuit adopts Rogers, lifts injunction against disparaging reference to NAACP

Radiance Foundation, Inc. v. National Association for the
Advancement of Colored People, No. 14-1568 (4th Cir. May 19, 2015)
 
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 district court granted an injunction and the court of
appeals reversed, saying some very useful things about trademark that I hope
they’ll remember in other cases.  As
usual, the conceptual tension between what gets said about First Amendment
protections against confusion liability and what gets said about dilution was
unaddressed, but that’s a small sour note. 
On the plus side, the Fourth Circuit resoundingly endorses Rogers v. Grimaldi, I think for the first
time.
 
The NAACP is the “oldest and largest civil rights
organization” in the US, “and one that holds a place of honor in our history.” The
Radiance Foundation is also a non-profit organization “focused on educating and
influencing the public about issues impacting the African American community”
from a Christian perspective. It runs two websites, TheRadianceFoundation.org
and TooManyAborted.com, along with a billboard campaign for TooManyAborted.com.
Radiance funds itself through licensing its artwork and through PayPal donations
from visitors to its websites.
 
Radiance posted an article criticizing the NAACP’s annual
Image Awards, entitled “NAACP: National Association for the Abortion of Colored
People.” The article “lambasted the NAACP for sponsoring an awards event to
recognize Hollywood figures and products that Radiance alleged defied Christian
values and perpetuated racist stereotypes,” and criticized other NAACP
positions, particularly its ties to Planned Parenthood and its position on
abortion. Contrary to the NAACP’s claims of neutrality on abortion, Radiance contended
that the NAACP’s actions actually demonstrate support for abortion.
 

National Association for the Abortion of Colored People next to billboard for TooManyAborted.com

Bumper sticker style “Civil Wrong” with “National Association for the Abortion of Colored People” label

The article appeared on Radiance’s site and the third-party
site Lifenews.com.  On
TheRadianceFoundation.com was also an image of a TooManyAborted billboard with
the headline “NAACP: National Association for the Abortion of Colored People” repeated
next to it. TooManyAborted.com used a graphic below of a red box with the words
“CIVIL WRONG” followed by the modified NAACP name. 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.” On LifeNews.com, the NAACP’s
Scales of Justice appeared as a graphic underneath the headline.
 
This lawsuit resulted, and ultimately this appeal.  The court of appeals began with first
principles.  “Much like advertising
regulations that prohibit using false or misleading information, trademark
infringement laws restrict speech in order to promote the government’s interest
in protecting consumers from confusing misappropriations of product
identifications.” [And dilution?] But this doesn’t impinge on the First
Amendment rights of critics and commentators “so long as the Act hews
faithfully to the purposes for which it was enacted.”  The use of trademarks to convey ideas,
criticism, comparison, and social commentary must be carefully protected,
through the use of the canon of constitutional avoidance.  Thus, an actionable use of a mark in commerce
must also be “in connection with” goods or services in a manner that is “likely
to cause confusion” among consumers as to the goods’ or services’ source or
sponsorship.
 
So, was 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”? To broadly construe this requirement would risk
liability for many noncommercial expressive and charitable activities, risking
a constitutional conflict.  At least five
other circuits use this element to protect all noncommercial uses of marks
against liability, though the Second Circuit doesn’t.  But at the very least, “in connection with”
shouldn’t cover “broad swaths” of noncommercial speech.  (Here we get one of many cites to Rogers.)   “[T]his 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.”
 
Thus, while the court did not hold that “commercial speech”
according to First Amendment doctrine would always
be coterminous with “in connection with,” it was the best guidance for applying
the Act.  [I take it the hesitation is in
order to provide some leeway for another United
We Stand
-type case, so that the Lanham Act could cover nonprofits using confusingly
similar names to fundraise.]  “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.’”  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 rejects noncommerciality as a complete defense, held that
a crucial factor was use not as commentary, but instead as a source identifier
for the infringer.  Thus, a mere “strained
or tangential association with a commercial or transactional activity” is
insufficient, given the First Amendment risks.
 
Okay, but then the Act is designed to cover a wide range of
products, and “goods or services” “remains a broad and potentially fuzzy
concept.”  Thus, there must be “a real
nexus” with goods or services to avoid a fatal First Amendment problem. 
 
Second, the use of a mark must be “likely to cause
confusion” among consumers regarding the
source or sponsorship of the goods or services
. “Here it is important to
remember that ‘trademark infringement protects only against mistaken purchasing
decisions and not against confusion generally.’”  There are lots of tests for assessing this “inherently
fact-bound and context dependent” question, but one must always bear in mind
that specific purpose.  “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.”  That might not change the factors, but it
does influence their application. “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.”  Similarity (as long as there are also
differences) between a mark and a parody may only enhance the parody’s effect,
and the strong mark’s strength is the mechanism by which confusion is avoided. 
 
When a mark is only being used to describe, rather than to
identify the source of defendant’s things, “restricting speech does not serve
the purpose of the Lanham Act.” As a result, “[e]ven some amount of ‘actual
confusion’ must still be weighed against the interest in a less fettered marketplace
of social issues speech.”
 
Given this background, the district court erred in several
ways.  First [and this error was invited
by prior Fourth Circuit precedent], the district 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 created a connection to the NAACP’s goods and services. “But typically
the use of the mark has to be in connection with the infringer’s goods or services, not the trademark holder’s.”  If the rule were otherwise, “even the most
offhand mention of a trademark holder’s mark could potentially satisfy the ‘in
connection with’ requirement,” which would make it equal or surpass the
jurisdictional “in commerce” element, making the jurisdictional requirement
superfluous and threaten the First Amendment.
 
True, in People for
the Ethical Treatment of Animals v. Doughney
, the Fourth Circuit 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. “But that rule applies specifically where the
infringer has used the trademark holder’s mark in a domain name.” [Because
why?]  That didn’t happen here.  [Translation: PETA was and remains wrong, as we already recognized in Lamparello, but we still don’t want to
go en banc to tidy this up.]
 
The district court then found that Radiance’s use of the
NAACP marks was also in connection with Radiance’s
goods or services, but it failed to show a sufficient nexus between Radiance’s
specific use of the marks and the sale, offer for sale, distribution, or
advertisement of any Radiance goods or services. The district court first found
that there was a sufficient nexus “with Radiance’s own information services”
because Radiance “provided information” on its website. “That ruling, however,
neuters the First Amendment. The provision of mere ‘information services’ without
any commercial or transactional component is speech — nothing more.”  Then the district court reasoned that
Radiance’s use was “part of social commentary or criticism for which they
solicit donations and sponsorship.”
 
While the court of appeals declined to make an “absolute”
rule,
 
the specific use of the marks at issue
here was too attenuated from the donation 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.
 
[Query: So would a Radiance campaign raising money to fight
this case against the NAACP qualify for protection against infringement
liability?  My sense is no, not on this
rationale, but what the court says later may make that kind of salami-slicing
irrelevant.]  The court of appeals noted
that the article was just one piece of Radiance’s larger content. “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.” Charitable appeals for funds are within the protection of the First
Amendment, and not pure commercial speech. Courts should thus “tread cautiously
when a trademark holder invokes the Lanham Act against an alleged non-profit
infringer whose use of the trademark holder’s marks may be only tenuously
related to requests for money.”
 
Not all solicitations by nonprofits are categorically immune
from Lanham Act liability, if there’s 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.”  But
here, the “in connection” requirement wasn’t met.
 
The district court further erred in its likely confusion
analysis.  First, it found confusion
based in large part on whether consumers thought “NAACP” actually stood for
“National Association for the Abortion of Colored People.” But trademark
infringement doesn’t protect against confusion about the marks themselves. “Thus
confusion about what a particular trademark says or looks like is not relevant
for infringement claims.” Nor is infringement law designed to protect mark
holders from confusion about their positions.  If people took issue with the NAACP’s
supposed support for abortion as a result of Radiance’s articles, that’s not
trademark infringement.  More speech is
the trademark owner’s only remedy.  The
NAACP has a big megaphone of its own by which to correct any errors about its
position by virtue of its status.  “‘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.”
 
The district court also found potential confusion about
affiliation between Radiance and the NAACP. 
But that’s bizarre, given the article’s strong criticism of the
NAACP.  The mark 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.”  True, internet attention spans
may be short, “but the briefest familiarity with the article would quickly
create the impression the author was no friend of the NAACP.”  Criticism isn’t confusion (citing New Kids).  Purpose is always essential; the district
court stopped when it found that Radiance hadn’t engaged in successful parody. 
But if “National Association for the Abortion of Colored People” isn’t
parody, it’s still akin to satire, which “works by distort[ing] . . . the
familiar with the pretense of reality in order to convey an underlying critical
message.”  That may be distortion, but it’s
effective distortion.  “[P]arody 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.”
 
Moreover, the full context diminished any likely confusion
even further.  The domain names and
webpage headings clearly denoted other organizations: The Radiance Foundation
or TooManyAborted, and each site carried dozens of articles on social and political
issues. But even if a viewer only caught the title, “NAACP: National
Association for the Abortion of Colored People,” the claim would still
fail.  “Titles, as part of expressive
works, ‘require[] more protection than the labeling of ordinary’ goods.” Rogers. 
Consumers understand titles to refer to the contents of a work rather
than its author or publisher.  Under Rogers, if there’s a connection to the
contents and no use in a way to clearly suggest authorship, use of a mark in a
title won’t generally be confusing in the Lanham Act sense.  Here, the title conveyed the subject of the
article.  The “satirical modification” of
the NAACP’s name “was designed, as many titles are, to be eye-catching and
provocative in a manner that induces the reader to continue on.” That didn’t
create likely confusion.
 
Dilution: Radiance’s use fell squarely within the statutory
exceptions.  Infringement protects
consumers; dilution “defends the trademark itself.” [And survives First
Amendment scrutiny because … never mind.] Tarnishment, alleged here, is an
association “that harms the reputation of the famous mark.”
 
Unfortunately, the court of appeals accepted the idea that
Radiance’s conduct did create a likelihood of tarnishment, because similarity
between Radiance’s mark [which the court held above was not being used as a mark by Radiance] and the NAACP’s mark was
likely to harm the reputation of the famous mark, because harming a famous mark’s
reputation means “creat[ing] consumer aversion to the famous brand.”  That can happen when the famous mark is
“linked to products of shoddy quality, or is portrayed in an unwholesome or
unsavory context.” Radiance didn’t challenge the finding of likely harm to the
NAACP’s marks. “Indeed, the whole point of the article was to criticize the
NAACP [note: not to criticize the NAACP’s marks!], and Radiance attempted to
accomplish that goal in part by playing off the NAACP’s name.”
 
But Radiance’s speech fell plainly within the fair and
noncommercial use exclusions.  The fair
use 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,” as long as it’s not a designation of
source of the diluter’s own goods or services. 
Radiance used the NAACP’s marks to comment on what it deemed the NAACP’s
policies.  Even taking the title out of
context, the use was still nominative, because it explicitly referred to what Radiance
believed the NAACP stands for.  Even if
the use wasn’t a parody, it was still criticism or commentary, also covered by
the exclusion.
 
The noncommercial use exclusion also applied.  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 state-specific webpages
for a fee,” the use of the NAACP’s marks was commercial. But the article itself
wasn’t an ad and didn’t mention Radiance’s services, even if the websites
generally provided opportunities to engage in financial transactions. “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.”

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