Intellectual Property — Court Vacates ‘NAACP’ Trademark Injunction

The Radiance Foundation Inc. v. Nat’s Ass’n for the Advancement of Colored People (Lawyers Weekly No. 001-088-15, 36 pp.) (Wilkinson, J.) No. 14-1568, May 19, 2015; USDC at Norfolk, Va. (Jackson, J.) 4^th Cir.

Holding: The 4^th Circuit vacates an injunction to halt a foundation’s use of “NAACP,” the trademark of the National Association for the Advancement of Colored People, to represent an anti-abortion message about the “National Association for the Abortion of Colored People”; plaintiff’s expression in no way infringed upon or diluted defendant’s trademark rights.

Plaintiff 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 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.

We hold that Radiance is not liable for trademark infringement or dilution of defendant’s marks by tarnishment. We vacate the injunction against Radiance and remand with instructions that defendant’s counterclaims be dismissed.

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 attention span on the Internet may not be long, but the briefest familiarity with the Radiance article would quickly create the impression the author was no friend of the NAACP. If not quite parody, the use of “National Association for the Abortion of Colored People” in this context may be more akin to satire, which works by distorting the familiar with the pretense of reality in order to convey an underlying critical message. The use of the satirical modifications 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.

The district court also erred in holding 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’s use of the marks was undeniably to criticize the NAACP’s perceived position on abortion, thus falling squarely within the statute’s explicit exclusions.

Trademark law in general and dilution in particular are not proper vehicles for combating speech with which one does not agree. The article in this case was harsh. But that did not forfeit its author’s First Amendment liberties.

We vacate the district court’s injunction and remand with directions to dismiss defendant’s Lanham Act counterclaims.

Vacated and remanded.