Radiance Foundation, Inc. v. National Ass'n for the Advancement of Colored People

PUBLISHED

UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT

No. 14-1568

THE RADIANCE FOUNDATION, INC.; RYAN BOMBERGER,

Plaintiffs - Appellants,

v.

NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE,

Defendant - Appellee.

-----------------------------------

ELECTRONIC FRONTIER FOUNDATION; AMERICAN CIVIL LIBERTIES UNION
OF VIRGINIA; NATIONAL BLACK PRO-LIFE COALITION; WALTER B. HOYE,
II; DR. ALVEDA C. KING; DR. DAY GARDNER,

Amici Supporting Appellants.

_______________

Appeal from the United States District Court for the Eastern
District of Virginia, at Norfolk. Raymond A. Jackson, District
Judge. (2:13-cv-00053-RAJ-DEM)

Argued: March 25, 2015 Decided: May 19, 2015

Before WILKINSON and HARRIS, Circuit Judges, and DAVIS, Senior
Circuit Judge.

Vacated and remanded by published opinion. Judge Wilkinson
wrote the opinion, in which Judge Harris and Senior Judge Davis
joined.
ARGUED: Charles Manley Allen, GOODMAN, ALLEN & FILETTI, PLLC,
Glen Allen, Virginia, for Appellants. Pratik A. Shah, AKIN GUMP
STRAUSS HAUER & FELD LLP, Washington, D.C., for Appellee. ON
BRIEF: William F. Demarest III, GOODMAN, ALLEN & FILETTI, PLLC,
Glen Allen, Virginia, for Appellants. Anthony T. Pierce, Z.W.
Julius Chen, Matthew A. Scarola, AKIN GUMP STRAUSS HAUER & FELD
LLP, Washington, D.C., for Appellee. Eugene Volokh, FIRST
AMENDMENT AMICUS BRIEF CLINIC, Mairead Dolan, Student, UCLA
SCHOOL OF LAW, Los Angeles, California, for Amici Electronic
Frontier Foundation and ACLU of Virginia. Catherine W. Short,
LIFE LEGAL DEFENSE FOUNDATION, Ojai, California; Nikolas T.
Nikas, Dorinda C. Bordlee, BIOETHICS DEFENSE FUND, Metairie,
Louisiana, for Amici National Black Pro-Life Coalition, Walter
B. Hoye II, Dr. Alveda C. King, and Dr. Day Gardner.

2
WILKINSON, Circuit Judge:

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 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. We

vacate the injunction against Radiance entered by the district

court and remand with instructions that defendant’s

counterclaims likewise be dismissed.

3
 I.

The National Association for the Advancement of Colored

People, better known by its acronym “NAACP,” is this country’s

“oldest and largest civil rights organization,” Radiance Found.,

Inc. v. NAACP, 25 F. Supp. 3d 865, 872 (E.D. Va. 2014), and one

that holds a place of honor in our history. It champions

“political, educational, social, and economic equality of all

citizens” while working to eliminate racial and other forms of

prejudice within the United States. Id. Since its formation, it

has pursued these objectives not only through litigation but

also through community outreach, informational services, and

educational activities on issues of significance to the African

American community. See id. The NAACP owns several trademarks,

among them “NAACP” (federally registered) and “National

Association for the Advancement of Colored People.”

The Radiance Foundation, established by Ryan Bomberger, is

also a non-profit organization focused on educating and

influencing the public about issues impacting the African

American community. Radiance addresses social issues from a

Christian perspective. It uses as its platform two websites,

TheRadianceFoundation.org and TooManyAborted.com, where it posts

articles on topics such as race relations, diversity,

fatherlessness, and the impact of abortion on the black

community. Id. at 873. Radiance also runs a billboard campaign

4
for TooManyAborted.com; individuals may sponsor these

billboards, licensing the artwork from Radiance. In addition to

its billboard campaign, Radiance funds its endeavors through

donations from visitors to its websites, which are facilitated

by “Donate” buttons on the webpages that link to a PayPal site.

In January 2013, Bomberger authored an article criticizing

the NAACP’s annual Image Awards, entitled “NAACP: National

Association for the Abortion of Colored People.” See J.A. 869.

The piece lambasted the NAACP for sponsoring an awards event to

recognize Hollywood figures and products that Radiance alleged

defied Christian values and perpetuated racist stereotypes. The

article then criticized other of the NAACP’s public stances and

actions. It particularly targeted the NAACP’s ties to Planned

Parenthood and its position on abortion. Though the NAACP has

often claimed to be neutral on abortion, Radiance maintains that

the NAACP’s actions actually demonstrate support for the

practice.

The article appeared on three websites: the two owned by

Radiance -- TheRadianceFoundation.com and TooManyAborted.com --

and a third-party site called LifeNews.com. Though the text of

the article was identical across the sites, the headlines and

presentation varied slightly. On TheRadianceFoundation.com,

directly below the headline was an image of a TooManyAborted

billboard with the headline “NAACP: National Association for the

5
Abortion of Colored People” repeated next to it. Id. The

TooManyAborted.com site posted the headline “The National

Association for the Abortion of Colored People” with a graphic

below of a red box with the words “CIVIL WRONG” followed by the

modified NAACP name. Id. at 899. 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.” Id. at 869, 989. Finally on LifeNews.com, the third-

party site, the NAACP’s Scales of Justice appeared as a graphic

underneath the headline. Id. at 101.

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 not infringed or

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

6
colorable imitation, created a likelihood of confusion among

consumers. Radiance Found., 25 F. Supp. 3d at 878-79.

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. Id. at

880, 895. The court found that Radiance’s actions failed to

qualify as fair use, news reporting, news commentary, or

noncommercial use. Radiance was accordingly deemed ineligible

for those usages protected under the Lanham Act itself. Id. at

897-99.

The district court issued a permanent injunction “against

any use [by Radiance] of ‘National Association for the Abortion

of Colored People’ that creates a likelihood of confusion or

dilution.” Id. at 902. However, it declined to award any damages

or attorney’s fees, as it found the NAACP had failed to make the

case that they were warranted. Id. at 899-901.

Radiance now appeals. “We review a judgment following a

bench trial under a mixed standard of review -- factual findings

may be reversed only if clearly erroneous, while conclusions of

law, . . . are examined de novo.” Roanoke Cement Co. v. Falk

Corp., 413 F.3d 431, 433 (4th Cir. 2005). For the reasons given

below, we must reverse. The NAACP does not have actionable

claims for trademark infringement here, and Radiance’s use of

the NAACP’s marks or colorable imitations falls squarely within

7
the exceptions to trademark dilution specifically included in

the Lanham Act to avoid encroaching on free speech rights.

II.

A.

We must first review briefly the Lanham Act principles

relevant to this action. The Lanham Act’s provisions prohibiting

trademark infringement, 15 U.S.C. §§ 1114(1) and 1125(a), exist

to protect consumers from confusion in the marketplace. See

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162–64

(1995). Trademarks designate the source or affiliation of goods

and services in order to provide consumers with information

about those goods and services, allowing mark holders to build

and benefit from the reputation of their brands. Trademark

infringement laws limit the ability of others to use trademarks

or their colorable imitations in commerce, so that consumers may

rely on the marks to make purchasing decisions. See CPC Int’l,

Inc. v. Skippy Inc., 214 F.3d 456, 461 (4th Cir. 2000) (“The

basic objectives of trademark law are to encourage product

differentiation, promote the production of quality goods, and

provide consumers with information about the quality of

goods.”).

Trademark protection, however, comes at a potential cost to

free expression. Much like advertising regulations that prohibit

using false or misleading information, trademark infringement

8
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.” Lamparello v.

Falwell, 420 F.3d 309, 313 (4th Cir. 2005). 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. Mattel, Inc. v. MCA Records, Inc., 296

F.3d 894, 900 (9th Cir. 2002). 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. See Rogers v. Grimaldi, 875 F.2d 994, 998

(2d Cir. 1989); cf. Edward J. DeBartolo Corp. v. Fla. Gulf Coast

Bldg. & Constr. Trades Council, 485 U.S. 568, 575 (1988).

It is for this reason that an actionable trademark claim

does not simply require that the alleged infringer used in

commerce the mark that the trademark holder possesses. It also

requires that the infringer’s use be “in connection with” goods

or services in a manner that is “likely to cause confusion”

9
among consumers as to the goods’ or services’ source or

sponsorship. 15 U.S.C. §§ 1114(1)(a) & 1125(a)(1); see People

for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359,

366 (4th Cir. 2001) (“PETA”); United We Stand Am., Inc. v.

United We Stand, Am. New York, Inc., 128 F.3d 86, 91-92 (2d Cir.

1997) (“It poked fun at the plaintiff, but did not cause

consumer confusion as to source or origin.” (emphasis added)).

Use of a mark that does not satisfy these two criteria is not

trademark infringement. Lamparello, 420 F.3d at 313-14.

B.

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.” 15 U.S.C. § 1114(1)(a);

see also id. § 1125(a)(1) (requiring mark be used “in connection

with any goods or services”). The NAACP urges us to give this

requirement a “broad construction,” Appellee’s Br. at 18, 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.

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 At least five of our sister circuits have interpreted this

element as protecting from liability all noncommercial uses of

marks. Farah v. Esquire Magazine, 736 F.3d 528, 541 (D.C. Cir.

2013); Utah Lighthouse Ministry v. Found. for Apologetic Info. &

Research, 527 F.3d 1045, 1052-54 (10th Cir. 2008); Bosley Med.

Inst., Inc. v. Kremer, 403 F.3d 672, 676-77 (9th Cir. 2005);

Taubman Co. v. Webfeats, 319 F.3d 770, 774 (6th Cir. 2003);

Porous Media Corp. v. Pall Corp., 173 F.3d 1109, 1120 (8th Cir.

1999). But see United We Stand, 128 F.3d at 89-90. We have not

taken a position on whether “in connection with” goods or

services indicates a commercial use. Lamparello, 420 F.3d at

313-14.

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.” Rogers, 875 F.2d at 998; see also

Taubman, 319 F.3d at 774 (stating that the “Lanham Act is

constitutional because it only regulates commercial speech”). It

is true that neither of the Lanham Act’s infringement provisions

explicitly mentions commerciality. Lamparello, 420 F.3d at 314.

Still, this 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. Bosley, 403

11
F.3d at 677; Int’l Bancorp, LLC v. Societe des Bains de Mer et

du Cercle des Estrangers a Monaco, 329 F.3d 359, 363-64 (4th

Cir. 2003); United We Stand, 128 F.3d at 92-93.

Although this case does not require us to hold that the

commercial speech doctrine is in all respects synonymous with

the “in connection with” element, we think that doctrine

provides much the best guidance in applying the Act. 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.” 15 U.S.C. § 1114(1)(a)

(emphasis added).

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. United States v. United Foods,

Inc., 533 U.S. 405, 409 (2001). 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. Greater Balt. Ctr. for Pregnancy

Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 285 (4th Cir.

2013) (en banc). These are not exclusive factors, and the

12
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.” United We Stand, 128 F.3d at

92. 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.

Finally, in order to determine whether the use is “in

connection with” goods or services, we must consider what

qualifies as a good or service. The Lanham Act does not directly

define either term, but we can deduce their meaning from other

defined terms and common usage. A “good” is best understood as a

valuable product, physical or otherwise, that the consumer may

13
herself employ. See 15 U.S.C. § 1127 (noting that a mark may be

used in commerce in relation to a good when placed on a good,

its container, its tag, or its associated documents); Black’s

Law Dictionary 809 (10th ed. 2014) (defining “goods” as

“[t]hings that have value, whether tangible or not”). A service

is a more amorphous concept, “denot[ing] an intangible commodity

in the form of human effort, such as labor, skill, or advice.”

Black’s Law Dictionary 1576. Because Congress intended the

Lanham Act to protect consumers from confusion in the

marketplace, it is probable that the Act is meant to cover a

wide range of products, whether “goods” or “services.” See Yates

v. United States, 135 S. Ct. 1074, 1082 (2015) (“Ordinarily, a

word's usage accords with its dictionary definition. In law as

in life, however, the same words, placed in different contexts,

sometimes mean different things.”).

It is clear, therefore, that despite the need to reconcile

the reach of the Lanham Act with First Amendment values, “goods

or services” remains a broad and potentially fuzzy concept. That

is yet another reason why the “in connection with” language must

denote a real nexus with goods or services if the Act is not to

fatally collide with First Amendment principles.

C.

The second element in establishing Lanham Act liability is

whether the use of the trademark is “likely to cause confusion”

14
among consumers regarding the source or sponsorship of the goods

or services. 15 U.S.C. §§ 1114(1)(a) & 1125(a)(1)(A). Here it is

important to remember that “trademark infringement protects only

against mistaken purchasing decisions and not against confusion

generally.” Lang v. Ret. Living Publ’g Co., 949 F.2d 576, 583

(2d Cir. 1991) (quotation marks omitted); see also Bosley, 403

F.3d at 677. 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.”

Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (emphasis

added).

This court and others have employed any number of

frameworks to assess the likelihood of confusion, generally

balancing a slew of relevant factors. See, e.g., Pizzeria Uno

Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). This court

considers “the strength of the [trademark holder’s] mark, the

degree of similarity between the two marks, the similarity of

the goods they identify, the similarity of the facilities used

in the businesses, the similarity of the advertising, the

[infringer’s] intent, and the presence of actual confusion,”

Anheuser-Busch, Inc. v. L. & L. Wings, Inc., 962 F.2d 316, 320

(4th Cir. 1992), as well as the “quality of the [infringer’s]

product,” and the “sophistication of the consuming public,”

George & Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 393

15
(4th Cir. 2009). These factors are not a “rigid formula” but

rather “only a guide,” Anheuser-Busch, 962 F.2d at 320, and each

factor may be more or less relevant or important for any given

case, Lamparello, 420 F.3d at 314-15.

In conducting such an inquiry, which is inherently fact-

bound and context dependent, we must bear in mind the purpose

behind it -- preventing consumer confusion of the infringer’s

goods or services with those of the trademark holder’s. 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. See Louis Vuitton Malletier S.A. v.

Haute Diggity Dog, LLC, 507 F.3d 252, 261 (4th Cir. 2007) (“An

intent to parody is not an intent to confuse the public.”

(quotations marks omitted)). Although finding an alternative

intent does not prevent us from applying the factors, it does

“influence[] the way in which [they] are applied.” Id.

Marks used to parody, satirize, criticize, comment, or

compare make “the multi-factored inquiry under Pizzeria

Uno . . . at best awkward” and require that the use be assessed

in that context. Anheuser-Busch, 962 F.2d at 321 (quotation

marks omitted). 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.

16
Louis Vuitton, 507 F.3d at 261. “The keystone of parody is

imitation,” Anheuser-Busch, 962 F.2d at 321, and the similarity

-- with key differences -- between the original mark and the

parody may only enhance the effect of the latter and the “strong

mark’s fame and popularity [are] precisely the mechanism[s] by

which likelihood of confusion is avoided,” Louis Vuitton, 507

F.3d at 261.

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. New Kids on the Block v. News Am. Publ’g, Inc., 971

F.2d 302, 306-08 (9th Cir. 1992). Indeed, criticism or parody of

a mark holder would be difficult indeed without using the mark.

Id. Trademark protections exist neither to allow companies to

protect themselves from criticism nor to permit them to “control

language.” Skippy, 214 F.3d at 462 (quoting Mark A. Lemley, The

Modern Lanham Act and the Death of Common Sense, 108 Yale L.J.

1687, 1710-11 (1999)). Even some amount of “actual confusion”

must still be weighed against the interest in a less fettered

marketplace of social issues speech. See Rogers, 875 F.2d at

1001.

17
 III.

In applying the above principles, we think the district

court made several errors. Those mistakes extended the Lanham

Act beyond the purposes it was intended to serve.

A.

In finding that Radiance’s use of the NAACP’s marks was “in

connection with” goods or services, the district court erred in

several respects. To begin, the 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. Radiance Found.,

Inc. v. NAACP, 25 F. Supp. 3d 865, 884 (E.D. Va. 2014). But

typically the use of the mark has to be in connection with the

infringer’s goods or services, not the trademark holder’s. See

Utah Lighthouse Ministry v. Found. for Apologetic Info. &

Research, 527 F.3d 1045, 1053-54 (10th Cir. 2008) (stating that

“the defendant in a trademark infringement . . . case must use

the mark in connection with the goods or services of a competing

producer, not merely to make a comment on the trademark owner's

goods or services”).

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

18
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,

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. 263 F.3d 359, 365 (4th Cir. 2001). But that rule

applies specifically where the infringer has used the trademark

holder’s mark in a domain name. Id. at 365-66. Neither of

Radiance’s websites used an NAACP mark in its domain name.

Rather, 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.

19
 The district court proceeded to find that Radiance’s use of

the NAACP’s marks was also in connection with Radiance’s goods

or services. Radiance Found., 25 F. Supp. 3d at 884-85. But the

court’s analysis failed to demonstrate a sufficient nexus

between the specific use of the marks and the sale, offer for

sale, distribution, or advertisement of any of the goods or

services that the court invoked. The court first found that

there was a sufficient nexus “with Radiance’s own information

services” because Radiance “provided information” on its

website. Id. at 884. 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.” Id. The NAACP

echoes the district court, arguing that the transactional nature

of the billboard campaign and Radiance’s fundraising efforts

place Radiance’s use of the marks “comfortably within” the reach

of the “in connection with” element. Appellee’s Br. at 24-26.

We need not address this point with absolute

pronouncements. Suffice it to say that the specific use of the

marks at issue here was too attenuated from the donation

20
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.” Vill. of

Schaumburg v. Citizens for a Better Env't, 444 U.S. 620, 632

(1980). Such solicitation, the Court stated, is not a “variety

of purely commercial speech.” Id. Courts are thus well-advised

to tread cautiously when a trademark holder invokes the Lanham

21
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.

B.

The district court likewise considered the likelihood of

confusion from Radiance’s use of the marks. First and foremost,

it based its finding in great part on whether consumers thought

“NAACP” in fact stood for “National Association for the Abortion

of Colored People.” Radiance Found., 25 F. Supp. 3d at 887-89

(relying on survey evidence). 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. Louis Vuitton Malletier S.A. v.

Haute Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir. 2007) (“The

22
misspellings pointed out by LVM [in the Vuitton name] are far

more likely in this context to indicate confusion over how to

spell the product name than any confusion over the source or

sponsorship of the ‘Chewy Vuiton’ dog toys.”). 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. Radiance Found., 25 F. Supp. 3d at 888-89.

“[I]ndignation is not confusion,” Girl Scouts of U.S. v.

Personality Posters, Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y.

1969), at least not as pertains to trademark infringement, and

at 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.

23
 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.” United States v.

Alvarez, 132 S. Ct. 2537, 2556 (2012) (Breyer, J., concurring in

the judgment). 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. See Rogers v.

Grimaldi, 875 F.2d 994, 1001 (2d Cir. 1989).

The district court also concluded that some consumers might

be confused about an affiliation between the authors of the

article and the NAACP. Radiance Found., 25 F. Supp. 3d at 889.

But it is not immediately apparent how someone would confuse an

article which is strongly critical of an organization with the

organization itself. 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

24
attention span on the Internet may not be long, but the briefest

familiarity with the article would quickly create the impression

the author was no friend of the NAACP. Indeed, in just the first

two lines, the piece refers to the NAACP as an “out-of-touch

liberal organization” and accuses its Image Awards of honoring

“black imagery churned out by often racist, anti-Christian,

perpetually sexist, violent and pornographic Hollywood.” J.A.

869. Intemperate and worse as the commentary is, holding it

actionable risks creating the paradox that criticism equals

confusion, thereby permitting companies to shield themselves

from adverse assessments. Indeed, “‘[m]uch useful social and

commercial discourse would be all but impossible if speakers

were under threat of an infringement lawsuit every time they

made reference to a person, company or product by using its

trademark.’” CPC Int’l, Inc. v. Skippy Inc., 214 F.3d 456, 462

(4th Cir. 2000) (quoting New Kids on the Block v. News Am.

Publ’g, Inc., 971 F.2d 302, 307 (9th Cir. 1992)).

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. Radiance Found., 25 F. Supp.

3d at 891-93. If not quite parody, the use of “National

Association for the Abortion of Colored People” in this context

25
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.” Farah v.

Esquire Magazine, 736 F.3d 528, 537 (D.C. Cir. 2013) (quotation

marks omitted). 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.”

Amicus Br. of Elec. Frontier Found. & ACLU of Va. at 3-4, 6-7.

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.

It is important moreover to pay sufficient attention to the

full context in which the mark was used, which diminishes the

likelihood of confusion about source even further. The domain

names and webpage headings clearly denote other organizations:

The Radiance Foundation or TooManyAborted. For each site, this

26
post was one of dozens of articles on social and political

issues.

Suppose, however, a viewer caught no more than the title of

the article: “NAACP: National Association for the Abortion of

Colored People.” The claim against Radiance would still not lie.

Titles, as part of expressive works, “require[] more protection

than the labeling of ordinary” goods. Rogers, 875 F.2d at 998.

For consumers understand and expect titles to pertain to the

contents of the underlying work rather than authorship or the

publisher. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894,

902 (9th Cir. 2002); Rogers, 875 F.2d at 999-1000. 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,

see Rogers, 875 F.2d at 999, 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.

27
 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.

IV.

The district court further held 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 Found., Inc. v. NAACP, 25 F. Supp. 3d 865,

899 (E.D. Va. 2014). We respectfully disagree. Radiance’s use of

the marks was undeniably to criticize the NAACP’s perceived

28
position on abortion, thus falling squarely within the statute’s

explicit exclusions. See 15 U.S.C. § 1125(c)(3).

A.

Whereas the law of trademark infringement is “motivated by

an interest in protecting consumers” from confusion as to a

product’s source, the law of dilution defends the trademark

itself. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 429

(2003); see also Nissan Motor Co. v. Nissan Computer Corp., 378

F.3d 1002, 1012 (9th Cir. 2004) (“The point of dilution law is

to protect the owner’s investment in his mark.”). Specifically,

the law allows “the owner of a famous mark that is distinctive”

to seek an injunction where another person’s use of a mark “is

likely to cause dilution by blurring or dilution by tarnishment

of the famous mark, regardless of the presence or absence of

actual or likely confusion, of competition, or of actual

economic injury.” 15 U.S.C. § 1125(c)(1). Dilution by blurring

is an “association arising from the similarity between a mark or

trade name and a famous mark that impairs the distinctiveness of

the famous mark.” Id. § 1125(c)(2)(B). By contrast, dilution by

tarnishment -- the theory at issue here -- is an association

“that harms the reputation of the famous mark.” Id.

§ 1125(c)(2)(C).

To state a prima facie claim of dilution by tarnishment,

therefore, the NAACP must satisfy four elements:

29
 (1) that [it] owns a famous mark that is distinctive;

(2) that [Radiance] has commenced using a mark in
commerce that allegedly is diluting the famous mark;

(3) that a similarity between [the diluter’s] mark and
the famous mark gives rise to an association between
the marks; and

(4) that the association is likely . . . to harm the
reputation of the famous mark.

Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 168 (4th Cir.

2012) (quoting Louis Vuitton Malletier S.A. v. Haute Diggity

Dog, LLC, 507 F.3d 252, 264-65 (4th Cir. 2007)).

The first three elements are met here: the marks Radiance

used in commerce were either identical or highly similar to the

NAACP’s undoubtedly famous marks. As for the fourth element,

harming a famous mark’s reputation means “creat[ing] consumer

aversion to the famous brand.” Rosetta Stone, 676 F.3d at 167.

Such aversion may be shown when the famous mark is “linked to

products of shoddy quality, or is portrayed in an unwholesome or

unsavory context.” Id. (quoting Scott Fetzer Co. v. House of

Vacuums Inc., 381 F.3d 477, 489 (5th Cir. 2004)); see also

Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 111 (2d Cir. 2010).

Radiance has not challenged the district court’s finding that

the article was likely to harm the NAACP’s marks. Indeed, the

whole point of the article was to criticize the NAACP, and

Radiance attempted to accomplish that goal in part by playing

30
off the NAACP’s name. The NAACP thus established a prima facie

case of dilution by tarnishment.

B.

However, that does not end the inquiry. The law provides

three broad, overlapping categories within which any use of a

famous mark, even if likely to cause harm or blurring, is not

actionable: fair use; news reporting and news commentary; and

noncommercial use. 15 U.S.C. § 1125(c)(3). Radiance asserts that

its use of the NAACP’s marks qualifies for protection under

these affirmative defenses. Because we hold that Radiance’s

speech falls plainly within the fair and noncommercial use

exclusions, we have no need to address Radiance’s “news

reporting and news commentary” defense.

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.” Id.

§ 1125(c)(3)(A)(ii) (emphasis added). 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.” Rosetta Stone, 676 F.3d at 169

31
(quotation marks omitted). No use may be “a designation of

source for the [user’s] own goods or services.” 15 U.S.C.

§ 1125(c)(3)(A). That is, the fair use exclusion does not

provide a safe harbor for one who uses another’s famous mark as

a trademark. See Louis Vuitton, 507 F.3d at 266. Finally, good

faith is a “common component” of fair use analysis. Rosetta

Stone, 676 F.3d at 169-70.

The NAACP, as the district court recognized, is an advocacy

organization. See Radiance Found., 25 F. Supp. 3d at 872. 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

32
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. Id. at 897. 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. 15 U.S.C. § 1125(c)(3)(A)(ii). Regardless of

whether Radiance’s use of the NAACP’s marks legally qualifies as

parody, it is abundantly clear that Radiance used “NAACP” in

conjunction with “National Association for the Abortion of

Colored People” to comment upon and criticize the NAACP for its

perceived position on abortion and other issues affecting the

African American community. “The National Association for the

Abortion of Colored People has no moral ground to stand upon,”

the article goes, “just quick sand oozing with the blood of

those most discriminated against. The NAACP’s covert and overt

support of Planned Parenthood negates any other human rights

they purport to defend.” J.A. 870. It is difficult to imagine

what the article is if not criticism. We cannot say, and the

*
Radiance does not assert that the use was descriptive fair
use, nor did the district court comment upon a descriptive
theory. We thus do not consider any argument that the use here
was descriptive and fair.

33
district court erred in holding, that Radiance’s use of the

NAACP’s famous marks was not a fair use.

C.

The final exclusion protects “[a]ny noncommercial use of a

mark.” 15 U.S.C. § 1125(c)(3)(C). The term “noncommercial”

refers to the First Amendment commercial speech doctrine.

Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005).

Commercial speech is “‘speech that does no more than propose a

commercial transaction.’” Harris v. Quinn, 134 S. Ct. 2618, 2639

(2014) (quoting United States v. United Foods, Inc., 533 U.S.

405, 409 (2001)); see also Greater Balt. Ctr. for Pregnancy

Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 284 (4th Cir.

2013) (en banc). In determining whether speech is commercial, we

consider several factors: (1) whether the speech is an

advertisement; (2) whether speech refers to specific products or

services; (3) whether the speaker has an economic motivation for

the speech; and (4)”the viewpoint of the listener,” i.e. whether

the listener would perceive the speech as proposing a

transaction. Greater Balt., 721 F.3d at 285-86. The factors are

cumulative, but, again, the absence of any particular element

does not necessarily render the speech noncommercial. Id.

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

34
state-specific webpages for a fee,” the use of the NAACP’s marks

was commercial. Radiance Found., 25 F. Supp. 3d at 899. 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.

Trademark law in general and dilution in particular are not

proper vehicles 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

35
purposes of comparison, criticism, point of reference or any

other such purpose without using the mark.” New Kids on the

Block v. News Am. Publ’g, Inc., 971 F.2d 302, 306 (9th Cir.

1992). 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.

V.

In sum, and for the aforementioned reasons, the plaintiff’s

expression in no way infringed upon or diluted defendant’s

trademark rights. We hereby vacate the district court’s

injunction and remand with directions that the defendant’s

Lanham Act counterclaims be dismissed.

VACATED AND REMANDED

36