Use of NAACP Trademarks in Internet Article Does Not Infringe or Dilute: Fourth Circuit | Practical Law

Use of NAACP Trademarks in Internet Article Does Not Infringe or Dilute: Fourth Circuit | Practical Law

In Radiance Foundation, Inc. v. NAACP, the US Court of Appeals for the Fourth Circuit reversed the US District Court for the Eastern District of Virginia and held that a nonprofit organization's use of the NAACP's marks in an online article was not infringement or dilution.

Use of NAACP Trademarks in Internet Article Does Not Infringe or Dilute: Fourth Circuit

by Practical Law Intellectual Property & Technology
Published on 21 May 2015 • USA (National/Federal)
In Radiance Foundation, Inc. v. NAACP, the US Court of Appeals for the Fourth Circuit reversed the US District Court for the Eastern District of Virginia and held that a nonprofit organization's use of the NAACP's marks in an online article was not infringement or dilution.
The US Court of Appeals for the Fourth Circuit on May 19, 2015, in Radiance Foundation, Inc. v. NAACP, vacated and remanded the US District Court for the Eastern District of Virginia's judgment for the National Association for the Advancement of Colored People's (NAACP) trademark infringement and dilution counterclaims against The Radiance Foundation (No. 14-1568, (4th Cir. May 19, 2015)). The court held that Radiance's use of the NAACP's trademarks in an online article did not:
  • Infringe the NAACP's marks because Radiance did not use the mark in connection with the sale, offering for sale, distribution or advertising of any goods or services nor was the use likely to cause customer confusion.
  • Dilute the NAACP's marks because Radiance's use fell within two statutory exclusions to dilution.
Radiance, a non-profit organization, focuses on influencing the public about issues affecting the African American community from a Christian perspective. It posts articles on two websites, runs billboard campaigns and receives funding by website visitors through "Donate" buttons on its webpages. The NAACP is a large civil rights organization that owns several trademarks, including the marks NAACP and NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE.
In January 2013, Radiance's founder wrote an article criticizing some of the NAACP's stances and actions, specifically the NAACP's ties to Planned Parenthood and its position on abortion. The article, titled "NAACP: National Association for the Abortion of Colored People," appeared on three websites, two of which were owned by Radiance and also included an option for online donation.
On January 28, 2013, the NAACP sent Radiance a cease and desist letter after discovering that a Google search for "NAACP" returned the article. Radiance sought a declaration action that:
  • It did not infringe or dilute any of the NAACP's marks.
  • Its actions were protected under the First Amendment.
The NAACP counterclaimed for federal trademark infringement under 15 U.S.C. §§ 1114(1) and 1125(a), state trademark infringement, and trademark dilution under 15 U.S.C. § 1125(c).
After a bench trial, the district court found for the NAACP on all counterclaims, denied Radiance declaratory relief and issued a permanent injunction against Radiance's use of the phrase "National Association for the Abortion of Colored People." The district court held that:
  • Radiance used the NAACP's marks, or a colorable imitation, "in connection with" goods and services that created a likelihood of consumer confusion.
  • Radiance's use created a likelihood of dilution by tarnishment.
On appeal, the Fourth Circuit reversed the district court, holding that:
  • The NAACP did not have actionable claims for trademark infringement.
  • Radiance's use of the NAACP's marks or colorable imitations qualified as fair use, non-commercial speech specifically excluded by the Lanham Act to avoid encroaching First Amendment free speech rights.

Likelihood of Confusion

The Fourth Circuit first analyzed whether Radiance's use of the NAACP's marks met the Lanham Act's threshold requirement that the alleged infringer's use be "in connection with the sale, offering for sale, distribution, or advertising of any goods or services." The Fourth Circuit, explaining that there must be a "real nexus with good or services" in order to avoid a conflict between the Lanham Act and the First Amendment, concluded that the district court had erred and extended the Lanham Act beyond its intended purposes.
Specifically, Radiance's use of the challenged terms in its article was not "in connection with" goods or services because, among other reasons:
  • Radiance only used the marks in the title and body of an article and not, for example, in its domain name, which might have satisfied the "in connection with" requirement.
  • The article appearing in response to a Google search for "NAACP" did not create a connection between the mark and the NAACP. If mere use of a mark with the trademark holder's goods or services satisfied the "in connection with" requirement, this would unfairly expand the requirement beyond the Lanham Act's "in commerce" jurisdictional element and also encroach First Amendment limits.
The district court also erred in finding that Radiance's use created a likelihood of consumer confusion by, among other things, incorrectly:
  • Basing its finding on whether consumers were confused about what the mark NAACP stood for. Trademark infringement focuses on whether consumers are confused about the marks as source identifiers, not about confusion over what a particular trademark says or looks like.
  • As evidence of actual confusion, relying on phone calls to the NAACP by people who disagreed with what they perceived to be NAACP policy based on the Radiance article. Confusion over the NAACP's policy position is not confusion over goods or services.
  • Failing to fully consider that Radiance used the marks in a title and consumers expect and understand titles to relate to the contents of the work, not to its source.

Dilution

The Fourth Circuit also disagreed that Radiance diluted the NAACP's marks by tarnishment, holding that the district court erred in denying Radiance protection through the exclusions in the dilution statute (15 U.S.C. § 1125(c)). Specifically, since Radiance used the marks to criticize the NAACP's position on social issues, it explicitly qualified for the fair use and noncommercial use exclusions.
The fair use exclusion covers any nominative or descriptive fair use, 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.
In holding that Radiance's use qualified under the noncommercial use exclusion, the court focused on the viewpoint of a reasonable reader. A reasonable reader would not think the article was commercial speech because:
  • The article was not an advertisement, never offered anything for sale and did not mention Radiance's services.
  • Although the websites where the article appeared provided opportunities to engage in financial transactions, this did not demonstrate that the article itself was commercial.
Because Radiance's use of the NAACP's marks in its article was not use in connection with goods and services and neither infringed upon nor diluted the NAACP's trademarks, the Fourth Circuit vacated the district court's injunction and remanded to the district court with directions to dismiss the NAACP's Lanham Act counterclaims.