The Volokh Conspiracy
Mostly law professors | Sometimes contrarian | Often libertarian | Always independent
I'm happy to report that the Fourth Circuit has just handed down Radiance Foundation v. NAACP, which holds that trademark law should be read narrowly in cases involving speech (other than commercial advertising). The district court had held that Radiance Foundation's use of the headline "NAACP: National Association for the Abortion of Colored People" for a Web site article harshly criticizing the NAACP infringed NAACP's trademark. (Note that my student Mairead Dolan and I filed an amicus brief on behalf of the Electronic Frontier Foundation and the ACLU of Virginia, supporting Radiance and thus arguing for the result that the Fourth Circuit reached.)
The opinion has some important things to say about trademark law generally—again, outside the context of political advertising—so I thought I'd quote it at length. First, some general observation by the court (some paragraph breaks added throughout the quotes below):
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….
Trademark protection … comes at a potential cost to free expression. 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. However, Congress "did not intend for trademark laws to impinge the First Amendment rights of critics and commentators."
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. 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….
Trademark law … [is] not [a] proper vehicle 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 purposes of comparison, criticism, point of reference or any other such purpose without using the mark."
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….
As to the claim that the use of the "NAACP: National Association for the Abortion of Colored People" title infringes NAACP's trademark because of the likelihood of confusion, the court concluded that (1) trademark law generally applies only to uses in commercial advertising, and (2) in any event, this use is unlikely to confuse people as to the source and sponsorship of the article (and that it's irrelevant whether it's likely to confuse people as to the NAACP's actual positions):
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." The NAACP urges us to give this requirement a "broad construction," 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.
At least five of our sister circuits [the D.C., Sixth, Eighth, Ninth, and Tenth] have interpreted this element as protecting from liability all noncommercial uses of marks. But see United We Stand Am., Inc. v. United We Stand, Am. New York, Inc., 128 F.3d 86, 91-92 (2d Cir. 1997)…. 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." …
Although this case does not require us to hold that the commercial speech doctrine [i.e., the doctrine defining when speech constitutes commercial advertising -EV] is in all respects synonymous with the "in connection with" element, we think that doctrine provides much the best guidance in applying the Act…. 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. 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. These are not exclusive factors, and the 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."
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….
[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 thereby 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 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 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, 263 F.3d 359, 365 (4th Cir. 2001). 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. But that rule applies specifically where the infringer has used the trademark holder's mark in a domain name…. 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….
The [district] court … found that there was a sufficient nexus [of the use of the NAACP trademark] "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.
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." … [But] the specific use of the marks at issue here was too attenuated from [Radiance's] 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.
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." Such solicitation, the Court stated, is not a "variety of purely commercial speech." Courts are thus well-advised to 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.
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.
And here is the court's reasoning as to the likelihood of confusion:
The second element in establishing Lanham Act liability is whether the use of the trademark is "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." 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." …
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. Indeed, criticism or parody of a mark holder would be difficult indeed without using the mark. Trademark protections exist neither to allow companies to protect themselves from criticism nor to permit them to "control language." Even some amount of "actual confusion" must still be weighed against the interest in a less fettered marketplace of social issues speech….
The district court … based its finding in great part on whether consumers thought "NAACP" in fact stood for "National Association for the Abortion of Colored People." 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. 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…. [A]t 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.
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."
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….
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. 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 distort[ing] … the familiar with the pretense of reality in order to convey an underlying critical message."
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." 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….
[Moreover, t]itles, as part of expressive works, "require more protection than the labeling of ordinary" goods. For consumers understand and expect titles to pertain to the contents of the underlying work rather than authorship or the publisher. 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, 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.
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.
Finally, the court rejected the NAACP's argument that Radiance's use violated trademark law because it "diluted" the distinctiveness of the NAACP's mark, even if it didn't confuse people about the source of the story:
Radiance's use of the marks was undeniably to criticize the NAACP's perceived position on abortion, thus falling squarely within the [antidilution] statute's explicit exclusions [for noncommercial use and for fair use]….
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." 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." …
The NAACP … is an advocacy organization. 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 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. 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….
The final exclusion [from the federal trademark antidilution provision] protects "[a]ny noncommercial use of a mark." The term "noncommercial" refers to the First Amendment commercial speech doctrine. Commercial speech is "'speech that does no more than propose a commercial transaction.'" …
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. 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.
Sounds right to me.