The Fourth Circuit recently ruled that a Defendant’s online article entitled “NAACP: National Association for the Abortion of Colored People” did not violate the trademark rights of the NAACP, the National Association for the Advancement of Colored People. It, therefore, vacated the Eastern District of Virginia’s injunction against the Defendant for its article criticizing the NAACP’s stance on abortion. The appellate court observed that the Lanham Act’s “reach is not unlimited,” and that a finding in favor of the NAACP would risk infringing on the Defendant’s “expressive right to comment on social issues under the First Amendment.”
In The Radiance Foundation, Inc. v. NAACP, the Fourth Circuit held that the NAACP did not have viable trademark infringement claims because the Defendant did not use the NAACP’s marks “in connection with the sale, offering for sale, distribution, or advertising of any goods or services.” 15 U.S.C. § 1114(1)(a). The court declined the NAACP’s request that it broadly construe the Lanham Act to expose trademark liability to a wide array of noncommercial expressive and charitable activities, like the Defendant’s solicitation of donations on its websites where the article was posted. “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.”
The Fourth Circuit also found that the Defendant’s use of the NAACP’s marks did not create the likelihood of confusion required for trademark infringement, despite the fact that some consumers may be confused about the NAACP’s true name and political positions. The court explained that “[t]rademark 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…. Likewise, trademark infringement is not designed to protect mark holders from consumer confusion about their positions on political or social issues.”
In addition, the Fourth Circuit held that the Defendant’s use of the NAACP’s marks fell squarely within the exceptions to trademark dilution included in the Lanham Act to avoid encroaching on free speech rights. Specifically, the article fell within the “fair use” exclusion that permits, among other things, use of a mark in connection with “identifying, parodying, criticizing, or commenting upon” the mark owner. 15 U.S.C. § 1125(c)(3)(A)(ii). The court also applied the “noncommercial use” exclusion because the article was not an advertisement. Id. at § 1125(c)(3)(C).
The Fourth Circuit decision is important for serving as a reminder that trademark law is “not [a] proper vehicle for combatting speech with which one does not agree.” As the Second Circuit observed nearly three decades ago, in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), courts “must construe the [Lanham] Act narrowly to avoid . . . a conflict” with “First Amendment values.”