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Radiance Found., Inc. v. National Association for the Advancement of Colored People

United States Court of Appeals, Fourth Circuit

May 19, 2015


Argued March 25, 2015

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[Copyrighted Material Omitted]

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


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.


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.

Before WILKINSON and HARRIS, Circuit Judges, and DAVIS, Senior Circuit Judge. Judge Wilkinson wrote the opinion, in which Judge Harris and Senior Judge Davis joined.


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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.


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

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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, and, 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 for; 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 -- and -- and a third-party site called Though the text of the article was identical across the sites, the headlines and presentation varied slightly. On, directly below the headline was an image of a TooManyAborted billboard with the headline " NAACP: National Association for the Abortion of Colored People" repeated next to it. Id. The 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, 899. Finally on, 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 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).

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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. 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 the exceptions to trademark dilution specifically included in the Lanham Act to avoid encroaching on free speech rights.



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, 115 S.Ct. 1300, 131 L.Ed.2d 248 (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. ...

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