Court: A trademark is not intended to protect its holder in the marketplace of ideas
By Steve Lash
The Daily Record Newswire
BALTIMORE, MD - An anti-abortion group did not infringe upon the NAACP's trademark by referring to the venerable Baltimore-based black civil rights group as the "National Association for the Abortion of Colored People" in an online article, a federal appeals court has ruled.
The Ashburn, Va.-based Radiance Foundation's substitution of "abortion" for "advancement" in the NAACP's name for the purpose of criticism fell within the "fair use" exception to the federal Lanham Act, which protects trademarks, the 4th U.S. Circuit Court of Appeals said in its 3-0 decision.
A trademark is intended to protect its holder against confusion from competitors in the commercial marketplace - not against commentators in the marketplace of ideas, the 4th Circuit said, adding that social and political commentary has broad protection under the federal Constitution's First Amendment right of free speech.
Radiance posted its version of the famous acronym to express its opposition to what it believes is the rights group's immoral support for abortion, "NAACP: National Association for the Abortion of Colored People" was the title of an online January 2013 article by Radiance founder Ryan Bomberger that noted the rights group's support for Planned Parenthood, which endorses abortion rights.
"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," Judge J. Harvie Wilkinson III wrote for the 4th Circuit, which governs U.S. district courts in Maryland, Virginia, West Virginia and the Carolinas.
"The article in this case was harsh. But that did not forfeit its author's First Amendment liberties," Wilkinson added in the published opinion Tuesday. "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 speech without protection."
The NAACP said Thursday that it is considering an appeal to the U.S. Supreme Court.
"We are very disappointed with the Court of Appeals' ruling," NAACP Interim General Counsel Marshall Taylor said in a statement.
"We do not challenge The Radiance Foundation's right to assert its opinion; however we continue to believe that the manner in which it used the NAACP's name and logo constituted a clear infringement and dilution of our federally protected trademarks."
But The Radiance Foundation praised the 4th Circuit's decision.
"This is a huge win for the First Amendment," the foundation stated on its website, www.theradiancefoundation.org. "The NAACP tried to crush our right to free speech but truth and justice prevailed."
In its decision, the Richmond, Va.-based 4th Circuit court cited other parodies of "famous monikers" that similarly did not infringe that group's trademark, including a reference to the American Civil Liberties Union as the "Anti-Christian Lawyers Union."
The Virginia chapter of the ACLU, though a victim of parody, filed papers with the 4th Circuit in support of Radiance's position that its criticism of the NAACP was protected speech and not a violation of the Lanham Act.
That argument, however, had failed in the U.S. District Court in Norfolk, Va.
U.S. District Judge Raymond A. Jackson ruled in June that Radiance's misuse of the trademarked NAACP acronym violated the Lanham Act by creating a likelihood of confusion among consumers as to whether the anti-abortion message was generated by the civil rights group. Jackson noted that Radiance solicited contributions on its controversial website, which he said could result in NAACP's supporters mistakenly donating to Radiance.
In addition, Radiance's use of "NAACP" created a likelihood of tarnishing the trademark by associating the rights group with a pro-abortion position its protected acronym does not convey, Jackson said.
The judge, however, awarded no monetary damages, finding the NAACP had suffered no financial injury.
But the 4th Circuit said a brief scan of Radiance's web page, as well as the foundation's criticism of the NAACP's perceived support for abortion rights, revealed it was not affiliated with the NAACP.
"We need not go so far as to say that social commentary solicitation 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," Wilkinson wrote. "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."
Wilkinson was joined in the opinion by Judge Pamela A. Harris and Senior Judge Andre M. Davis.
The case is The Radiance Foundation v. National Association for the Advance of Colored People, No. 14-1568.
Published: Wed, May 27, 2015
