Last fall, we wrote about a troubling decision in a district court that ruled that the NAACP could use trademark law to censor a vocal critic who had written a mocking online article calling the NAACP the “National Association for the Abortion of Colored People” as part of an anti-abortion campaign. The NAACP sent the organization that posted the story, the Radiance Foundation (and the author/owner of Radiance, Ryan Bomberger), a legal threat letter. In response, Radiance filed for declaratory judgment that it did not infringe on the NAACP’s trademarks, and the NAACP countersued arguing trademark infringement. The lower court sided with the NAACP, and barred Bomberger/Radiance from using the fake NAACP name to mock the group.
No matter how you feel about the NAACP or abortion, the idea that it would use trademark law to silence a critic is highly questionable. Remember, the purpose of trademark law is to protect consumers from confusion in commercial settings. But, as with copyright, many seek to use it as a crude censorship tool — and here, it worked. At first. Thankfully, the Fourth Circuit has overturned that ruling noting the total lack of actual trademark infringing, and hinting at (though leaving aside) the serious First Amendment concerns. The court here notes that to interpret trademark law the way the NAACP requests would lead to plenty of suppressed speech that has nothing to do with the true purpose of trademark law:
The NAACP urges us to give this requirement a “broad construction,” Appellee’s Br. at 18, but that construction would expose to liability a wide array of noncommercial expressive and charitable activities. 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. We decline to reach so far.
From there, the court rightly worries about what would happen if it accepted the NAACP’s interpretation of trademark law:
The danger of allowing the “in connection with” element to suck in speech on political and social issues through some strained or tangential association with a commercial or transactional activity should thus be evident. Courts have uniformly understood that imposing liability under the Lanham Act for such speech is rife with the First Amendment problems.
The court then details where the lower court went wrong. The lower court claimed that because Radiance sought donations in its sidebar, that made the article “use in commerce.” But the appeals court points out that this is ridiculous and would “neuter the First Amendment.”
That ruling, however, neuters the First Amendment….
Suffice it to say that the 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. A visitor likely would not perceive the use of the NAACP’s marks in the article as being in connection with those transactional components of the website. It is important not to lose perspective. The article was just one piece of each Radiance website’s content, which was comprised of articles, videos, and multimedia advocacy materials. 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. To say it was would come too close to an absolute rule that any social issues commentary with any transactional component in the neighborhood enhanced the commentator’s risk of Lanham Act liability.
And thus, the court notes that merely writing an article that mocks the NAACP is not really “use in commerce” for the sake of trademark law. From there, the court also takes on the “likelihood of confusion” question, and finds no such likelihood exists. And, again, the court notes (correctly) that getting this test wrong could have First Amendment implications:
Indeed, criticism or parody of a mark holder would be difficult indeed without using the mark…. Trademark protections exist neither to allow companies to protect themselves from criticism nor to permit them to “control language.” …. Even some amount of “actual confusion” must still be weighed against the interest in a less fettered marketplace of social issues speech.
And, in this case, the lower court was itself quite confused… over the basics of trademark law. First, it notes, it doesn’t matter if Radiance’s usage confused people into thinking that the NAACP supported abortion — as that’s not what trademark law is about:
Likewise, trademark infringement is not designed to protect mark holders from consumer confusion about their positions on political or social issues. The evidence of “actual confusion” relied on by the district court consisted of phone calls to the NAACP by people who took issue with the NAACP supporting abortion. Radiance Found…. “[I]ndignation is not confusion,” … at least not as pertains to trademark infringement, and at best the calls demonstrated confusion as to the NAACP’s policy positions rather than any good or service. Policy stances are neither goods nor services, though the means of conveying them may be.
And from there we get to the key point. If the NAACP’s position here were accepted, it would create serious problems that would come back around to likely haunt the NAACP itself:
Political discourse is the grist of the mill in the marketplace of ideas. It may be that the only — but also the best — remedy available to a trademark holder is to engage in responsive speech. For even where a speaker lies, “more accurate information will normally counteract the lie.”… The NAACP is a renowned civil rights organization with numerous mechanisms for connecting with its membership and the public. Organizations of its size and stature possess megaphones all their own. “Actual confusion” as to a nonprofit’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.
On top of that, the court is perplexed as to how the lower court could possibly find a likelihood of confusion as to the source of the mocking article, considering that it was clearly mocking the NAACP, rather than coming from it:
It is not immediately apparent how someone would confuse an article which is strongly critical of an organization with the organization itself. The mark in this case was used primarily to identify the NAACP as the object of Radiance’s criticism, resembling a descriptive or nominative fair use albeit by employing a modified version of the name. Admittedly, the attention span on the Internet may not be long, but the briefest familiarity with the article would quickly create the impression the author was no friend of the NAACP. Indeed, in just the first two lines, the piece refers to the NAACP as an “out-of-touch liberal organization” and accuses its Image Awards of honoring “black imagery churned out by often racist, anti-Christian, perpetually sexist, violent and pornographic Hollywood.”
In short, being mean doesn’t mean a likelihood of confusion:
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.
It’s disappointing that an organization that so relies on free speech decided to attack it in this case. While the court avoids having to take a First Amendment position, it’s clear that the First Amendment is lingering behind the entire ruling:
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, as noted, “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.
It’s only unfortunate that the case even had to go this far, and that the district court got it so wrong the first time around.