The Court of Appeals for the Fourth Circuit has issued an important decision at the intersection of First Amendment and trademark law, marking the second time in two days that free speech has triumphed over expansive intellectual property claims. On Monday it was the Ninth Circuit’s en banc decision in Garcia v. Google, rejecting an effort to use adventurous copyright theories to vindicate the plaintiff’s interest in protecting her reputation; the next day came the Fourth Circuit decision in Radiance Foundation v. NAACP, a ruling that bristles with excellent discussions of the boundaries between trademark law and the freedom of expression protected by the First Amendment.
Both cases arose from lawsuits over the expression of extremists: in the first case, film-makers who seemed to delight in creating a provocation against adherents of Islam; in the second, a group of wingnuts who attack the NAACP for its supposed support for abortion by merely associating itself in some respect with Planned Parenthood.
Today’s blog post is about the second case, in which the Fourth Circuit comes close to holding, as several other circuits have done, that the use of a trademark for the purpose of non-commercial discussion of public issues is beyond the reach of the trademark laws. The court’s discussion of this issue, as well of the danger to First Amendment rights of expanding the trademark laws into non-commercial terrain, will be cited for years to come. Similarly, the court recognizes the need to construe the “likelihood of confusion” requirement narrowly when critical expression is at issue, and equally important for purposes of trademark doctrine, the court ultimately finds no likelihood of confusion without any slavish analysis of the “likelihood of confusion” factors. The only disappointing part of the opinion is its treatment of the NAACP’s dilution claim, although, in the end, the panel roundly dismissed that claim based on a solid analysis of the fair use and non-commercial use defenses. (Other blog posts about the case by EFF, Volokh Conspiracy, and Techdirt.)
Facts and Course of the Case
The trademark defendant is a group called the Radiance Foundation, which placed an article on some of its web sites entitled “NAACP: National Association for the Abortion of Colored People," in which it argued that, even though the NAACP takes no official position on abortion, it bears responsibility for the abortions by black women because it does not sufficiently distance itself from Planned Parenthood’s provision of abortion services. This is not the first time critics have made fun of the NAACP’s name – I recall discussions within the family of the judge for whom I clerked, who was a prominent member of the black community in Detroit, about the National Association for the Advancement of Certain People, a name that Fannie Lou Hamer, Marcus Garvey, and others deployed as a sign of their discontent with the organization. The NAACP never filed any lawsuits over that. But as our friends at the NAACP Legal Defense and Education Fund can tell us, the NAACP has developed a quick trigger finger over trademark disputes, and it reacted to Radiance’s critical articles with a trademark-based cease-and-desist letter that no doubt bought Radiance’s criticism much greater attention than it might otherwise have received.
The NAACP objected both to the use of the parody name in the article and headline and to the display of some of the NAACP’s trademarked images in identifying the subject of Radiance’s criticisms. Radiance sued for a declaratory judgment of non-infringement and non-dilution, and the NAACP counterclaimed seeking both equitable relief and damages. Among its other evidence, it submitted a consumer survey showing modest fractions of actual confusion based on the use of the parody name — modest but, if the various categories of confusion are combined, over the 10% threshold that is often cited as representing a solid survey showing of actual confusion. After cross-motions for summary judgment, the case proceeded to a bench trial; the trial judge found that the parody name (which the trial judge decided was not really a parody) both infringed the NAACP name and diluted the name through tarnishment (he ruled for Radiance on the logos). After a detailed review of the standard likelihood of confusion factors, he granted a permanent injunction barring “any use of ‘National Association for the Abortion of Colored People’ that creates a likelihood of confusion or dilution as to any [NAACP] trademarks.” The judge refused to award any damages, not because he deemed damages inappropriate but only because the NAACP’s efforts to prove Radiance’s economic gains from misuse of the mark were insufficiently detailed. He also declined to find Radiance’s explanation for its misuse of the marks so weak as to make the case “exceptional” warranting an award of attorney fees under the Lanham Act.
Radiance appealed, and gained important support from an amicus brief prepared for the ACLU and EFF by the UCLA First Amendment Clinic with Eugene Volokh; a unanimous panel of the Fourth Circuit has now reversed in an opinion authored by Judge J. Harvie Wilkinson. Its analysis is worth considering at some length because it will be so useful going forward.
Construing the Lanham Act Narrowly to Avoid Conflict with the First Amendment
Although the trial court’s injunction could be subject to attack based on the First Amendment, the panel begins with the strategy of constitutional avoidance, saying that it would construe the Lanham Act narrowly to avoid having to decide a constitutional question. Trademark law provides an important protection to consumers, allowing them to gain assurance that a maker or seller whom they have found reliable is in fact the supplier of goods later provided under that mark, but “trademark protection . . . comes at a potential cost to free expression” (page 8). That conflict is avoided “so long as the Act hews faithfully to the purposes for which it was enacted.” (page 9). Because the Fourth Circuit had previously decided in Lamparello v. Falwell that Congress did not intend the Lanham Act to impinge on the First Amendment rights of commentators, this strategy, Judge Wilkinson says, “is 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.” (page 9). Although not resting on the First Amendment, the opinion returns time and again to the danger to free expression posed by the NAACP’s claims.
Avoiding Application to Non-Commercial Uses
One of the principal means by which several other circuits have avoiding the risk that trademark claims might impinge on free speech is by construing the Lanham Act not to apply to noncommercial uses of the mark. When we argued the Lamparello case ten years ago, defending a blogger who had used the domain name fallwell.com for a web site attacking Falwell’s misuse of biblical language to condemn gays, we argued that “use in commerce” is not enough, that the alleged trademark infringer must have used the mark “in connection with the sale, distribution or advertising of goods and services,” and that this amounts to a requirement that the mark must have been used to promote commercial speech. The Fourth Circuit refused to draw such a bright line in Lamparello, and the panel in this case, although recognizing that several other circuits have gone that route, persisted in that refusal. Still, some of the panel’s discussion comes quite close. For example, the panel said that “commercial speech . . . doctrine provides much the best guidance in applying the Act” (page 12), and that “[t]he danger [comes when] allowing the “in connection with” element to suck in speech on political and social issues through some strange or tangential association with a commercial or transactional activity.” (page 13). The panel thus required a narrow construction of the terms “goods” and services”; for example, it is not enough that a use of the mark be related somehow to the trademark holder’s goods and services; it must be used to promote the alleged infringer’s goods and services (page 18). And the fact that the alleged infringer “provided information on its website” does not make the use “in connection with” the infringer's “information services" – “The provision of mere ‘information services’ without any commercial or transactional component is speech—nothing more.” (page 20). Considering that a number of early decisions allowing the use of trademark law to bully critics rested on the proposition that the defendant’s provision of “information services” through its web site could alone support invocation of trademark law, this aspect of the opinion is welcome indeed.
Interestingly, the court of appeals flatly rejected the argument that Radiance’s criticism of the NAACP became commercial just because its web site solicited donations and paid sponsorships, one of the facts on which the trial court had relied. “[T]he specific use of the marks at issue here was too attenuated from the donation 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. . . . 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.” (pages 20-21).
Finding No Likelihood of Confusion
The panel opinion found a second, independent reason for overturning the trial court’s injunction – the lack of any actionable likelihood of confusion about the source or sponsorship of the alleged infringer’s goods or services. The panel repeatedly recognized that “the likelihood of confusion test, if misapplied, can implicate free speech concerns.” (page 17). The appellate court never expressly addressed the consumer survey to the extent that it found significant levels of confusion, but its opinion suggests that the mere existence of some confusion was irrelevant: “Even some amount of ‘actual confusion’ must still be weighed against the interest in a less fettered marketplace of social issues speech.” (page 17). Moreover, to the extent that some users expressed confusion about whether the NAACP in fact supported abortions, that confusion was deemed legally irrelevant: “trademark infringement is not designed to protect mark holders from consumer confusion about their positions on political or social issues.” (page 23). And again, “‘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.” (page 24).
One of the most important parts of this discussion was the dismissive attitude toward the “likelihood of confusion” factors that many judges feel obligated to recite and decide in resolving trademark infringement claims. To be sure, the opening part of the opinion on likelihood of confusion began with a recitation of the Fourth Circuit’s standard listing of factors (page 15-16), but the opinion went on recognize that the factors must be treated differently when marks are used to criticize or comment on the markholder (page 16), and then in the section of the opinion about the application of the law of likely confusion to the facts of the case (pages 22 to 28), the court did not discuss the “likelihood of confusion” factors at all. Barton Beebe has argued based on an empirical study of trademark decisions that the likelihood of confusion factors don’t really guide infringement rulings; rather, courts often make up their minds about the proper outcome of infringement suits and then deploy the “factors” accordingly. The Fourth Circuit’s reversal of the trial court’s ruling in this case, without relying on a factor analysis, represents a breath o
f fresh air in that regard.
One other significant aspect of the Radiance decision is its discussion of the application of trademark law to the use of the parody name in the title of the article. A series of cases decided in several circuits, beginning with the Second Circuit in Rogers v. Grimaldi, say that, because titles generally characterize content rather than authorship, and are often written in a creative and eye-catching manner, in order to bring a trademark action over a title the plaintiff must allege and prove that the title has no connection to the contents and is not used in a way that clearly suggests authorship when a trademark is used in the title of a creative work. The Fourth Circuit had never addressed this line of cases, but the Radiance decision adopts it (page 27).
Finally, one of the striking aspects of the decision is its lack of any sign of deference to the trial judge’s findings after a bench trial. The appellate court seems to have looked at the use, decided that it posed no likelihood of confusion about source, and so reversed the trial court’s judgment. After all, the article containing the critical name was so loaded with critical statements about the NAACP, “intemperate and worse,” that nobody could look at the article and think that it was put out by the NAACP itself. (page 25) “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.” (page 26)
Dilution by Tarnishment Is Defeated by Fair Use and Noncommercial Use Defenses
The one part of the opinion that is mildly disappointing is the discussion of NAACP’s claim that Radiance’s use of its mark constituted dilution by tarnishment. NAACP is no doubt a famous mark, but Professor McCarthy is at pains to remind us that the concept of tarnishment involves harm to the reputation of the mark, not harm to the reputation of the trademark owner. The opinion indicates that “Radiance has not challenged the district court's finding that the article was likely to harm the NAACP's marks.” If the panel had left it at that, all very well and good, but unfortunately, the Court went on to endorse the uncontested ruling below : “the whole point of the article was to criticize the NAACP, and Radiance attempted to accomplish that goal in part by playing off the NAACP's name. The NAACP thus established a prima facie case of dilution by tarnishment.” (pages 30-31). But harm to the NAACP is irrelevant!
Happily, the opinion also finds two of the three statutory dilution defenses applicable: the defense of nominative use and the defense of noncommercial use. On the former, the court noted that the use of a mark to “criticize of comment” on the trademark owner is nominative fair use, and it sidestepped the trial judge’s determination that the name was not a parody: "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. . . Regardless of whether Radiance's use of the NAACP's marks legally qualifies as parody, it is abundantly clear that Radiance used 'NAACP' . . . to comment upon and criticize the NAACP." (page 33). Finally, echoing its discussion of the “in connection with goods and services” requirement for an infringement claim, the panel decided that this exception applied, even though there were solicitations for donations on the same web page as the critical article: “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.” (page 35).
The opinion returned once again to the constraints that free expression imposes on trademark law, closing the noncommercial use defense section with these thoughts (pages 35-36) "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 . . . it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark.. . . 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.”
Indeed. Much in this opinion for future use.