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Radiance Found., Inc. v. NAACP - 786 F.3d 316 (4th Cir. 2015)

Rule:

Use of a protected mark as part of speech that does no more than propose a commercial transaction plainly falls within the Lanham Act's reach. Courts also look to the following factors: 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 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, courts can confidently state that the use is in connection with the activity. A crucial factor is that the infringer used 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.

Facts:

The Radiance Foundation, a non-profit organization focused on educating and influencing the public about issues impacting the African American community, published an article online entitled "NAACP: National Association for the Abortion of Colored People." Inter alia, the article criticized the National Association for the Advancement of Colored People’s stance on abortion. Thereafter, the NAACP sent Radiance a cease-and-desist letter on January 28, 2013, after a Google alert for the "NAACP" mark unearthed the LifeNews.com article. Radiance thereupon brought a declaratory action seeking a ruling that it had neither infringed nor diluted any of the NAACP's marks and that its use of the marks, or similar ones, was protected under the First Amendment. The NAACP counterclaimed for trademark infringement under 15 U.S.C. §§ 1114(1) and 1125(a) and Virginia state law, and trademark dilution under 15 U.S.C. § 1125(c). After a bench trial, the district court found for the NAACP on all counterclaims and denied declaratory relief to Radiance. It held that Radiance had used the marks "in connection with" goods and services and that its use of the "NAACP" and "National Association for the Advancement of Colored People" marks, or a colorable imitation, created a likelihood of confusion among consumers. The district court also found that the use of the mark created a likelihood of dilution by tarnishment by associating the NAACP and its marks with a pro-abortion position. The district court further found that Radiance's actions failed to qualify as fair use, news reporting, news commentary, or noncommercial use. Radiance appealed.

Issue:

In its usage of the “NAACP mark” for an article it published online, did Radiance infringe or dilute any of the NAACP’s marks?

Answer:

No.

Conclusion:

The Court held that Radiance’s expression in no way infringed upon or diluted NAACP’s trademark rights. According to the Court, NAACP did not have actionable counterclaims for trademark infringement under the Lanham Act, 15 U.S.C.S. §§ 1114(1) and 1125(a), because it failed to show that Radiance’s use of NAACP’s marks was not in connection with the sale, offering for sale, distribution, or advertising of any goods or services. Furthermore, the Court opined that Radiance’s use of the mark did not create a likelihood of confusion. The Court further averred that Radiance’s use of NAACP’s marks or colorable imitations fell squarely within the exceptions to trademark dilution by tarnishment, specifically included in the Lanham Act to avoid encroaching on free speech rights, because Radiance’s use of the marks was undeniably to criticize NAACP's perceived position on abortion.

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