Radiance Found., Inc. v. NAACP, No. 14-1568 (4th Cir. May 19, 2015).
The Radiance Foundation, an evangelical Christian nonprofit dedicated to “issues impacting the African American community,” published an article called “NAACP: National Association for the Abortion of Colored People.” The article criticized the NAACP for its ties to Planned Parenthood, its position on abortion, and its defiance of Christian values.
The NAACP sent Radiance a cease-and-desist letter claiming trademark infringement. Radiance then filed a declaratory judgment action that asked the district court to rule that it hadn’t infringed the NAACP’s trademarks. The NAACP asserted counterclaims for trademark infringement and dilution. After a bench trial, the district court ruled in favor of the NAACP.
On appeal, the Fourth Circuit, prompted in part by First Amendment concerns, holds that the Lanham Act applies only when the use of a trademark has “a real nexus with goods or services.” The district court, says the Fourth Circuit, erred in determining that there was such a nexus here.
The court—again prompted by First Amendment worries—also holds that using another person’s trademark typically creates a likelihood of confusion only when consumers might confuse the infringer’s goods or services with those of the trademark holder’s. If Radiance’s article created confusion about the NAACP’s policy positions, the Fourth Circuit continues, the remedy for that is not a trademark suit but more speech. So the injunction entered by the district court is vacated and the appeal is remanded to the district court with directions to dismiss the NAACP’s counterclaims.