Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 1 of 36 PUBLISHED UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT No. 14-1568 THE RADIANCE FOUNDATION, INC.; RYAN BOMBERGER, Plaintiffs - Appellants, v. NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE, Defendant - Appellee. ----------------------------------ELECTRONIC FRONTIER FOUNDATION; AMERICAN CIVIL LIBERTIES UNION OF VIRGINIA; NATIONAL BLACK PRO-LIFE COALITION; WALTER B. HOYE, II; DR. ALVEDA C. KING; DR. DAY GARDNER, Amici Supporting Appellants. _______________ Appeal from the United States District Court for the Eastern District of Virginia, at Norfolk. Raymond A. Jackson, District Judge. (2:13-cv-00053-RAJ-DEM) Argued: March 25, 2015 Decided: May 19, 2015 Before WILKINSON and HARRIS, Circuit Judges, and DAVIS, Senior Circuit Judge. Vacated and remanded by published opinion. Judge Wilkinson wrote the opinion, in which Judge Harris and Senior Judge Davis joined. Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 2 of 36 ARGUED: 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. ON BRIEF: 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. 2 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 3 of 36 WILKINSON, Circuit Judge: The entitled Radiance “NAACP: Foundation National published Association an for article the online 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 counterclaims likewise be dismissed. 3 that defendant’s Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 4 of 36 I. 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 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 influencing American the organization public community. about Radiance focused issues on educating impacting addresses social the issues and African from a Christian perspective. It uses as its platform two websites, TheRadianceFoundation.org and TooManyAborted.com, where it posts articles on fatherlessness, topics and such the as impact race of relations, abortion on diversity, the black community. Id. at 873. Radiance also runs a billboard campaign 4 Appeal: 14-1568 for Doc: 38 Filed: 05/19/2015 TooManyAborted.com; Pg: 5 of 36 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 -- TheRadianceFoundation.com and TooManyAborted.com -and a third-party site called LifeNews.com. Though the text of the article was identical across the sites, the headlines and presentation varied slightly. On TheRadianceFoundation.com, directly below the headline was an image of a TooManyAborted billboard with the headline “NAACP: National Association for the 5 Appeal: 14-1568 Doc: 38 Abortion of Filed: 05/19/2015 Colored TooManyAborted.com People” site Pg: 6 of 36 repeated posted the next to headline it. “The Id. 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, 989. Finally on LifeNews.com, the thirdparty 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 LifeNews.com 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). 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 6 Appeal: 14-1568 Doc: 38 colorable Filed: 05/19/2015 imitation, created Pg: 7 of 36 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. qualify The as court fair noncommercial found use, use. that news Radiance Radiance’s reporting, was actions news accordingly failed to commentary, or 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 7 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 8 of 36 the exceptions to trademark dilution specifically included in the Lanham Act to avoid encroaching on free speech rights. II. A. 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 Qualitex consumers Co. v. from Jacobson confusion Prods. in Co., the 514 marketplace. U.S. 159, See 162–64 (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. 2000) (“The basic objectives of trademark law are to encourage product differentiation, promote the production of quality goods, and provide consumers with information about the quality of goods.”). Trademark protection, however, comes at a potential cost to free expression. Much like advertising regulations that prohibit using false or misleading information, 8 trademark infringement Appeal: 14-1568 laws Doc: 38 restrict interest Filed: 05/19/2015 speech in in Pg: 9 of 36 order protecting to promote consumers the government’s from confusing misappropriations of product identifications. However, Congress “did not intend Amendment rights for of trademark critics and laws to impinge commentators.” the First Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005). The Lanham Act and First Amendment may be in tension at times, but they are not in conflict so long as the Act hews faithfully to the purposes for which it was enacted. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002). The risk of impinging on protected speech is much greater when trademarks serve not to identify goods but rather to obstruct the conveyance of ideas, criticism, comparison, and social commentary. The canon of constitutional avoidance in this area is thus 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. See Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989); cf. Edward J. DeBartolo Corp. v. Fla. Gulf Coast Bldg. & Constr. Trades Council, 485 U.S. 568, 575 (1988). It is for this reason that an actionable trademark claim does not simply require that the alleged infringer used in commerce the mark that the trademark holder possesses. It also requires that the infringer’s use be “in connection with” goods or services in a manner that is “likely to cause confusion” 9 Appeal: 14-1568 among Doc: 38 Filed: 05/19/2015 consumers as to the Pg: 10 of 36 goods’ or services’ source or sponsorship. 15 U.S.C. §§ 1114(1)(a) & 1125(a)(1); see People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001) (“PETA”); United We Stand Am., Inc. v. United We Stand, Am. New York, Inc., 128 F.3d 86, 91-92 (2d Cir. 1997) (“It poked fun at the plaintiff, but did not cause consumer confusion as to source or origin.” (emphasis added)). Use of a mark that does not satisfy these two criteria is not trademark infringement. Lamparello, 420 F.3d at 313-14. B. The first element of trademark infringement at issue is thus whether Radiance’s use of the NAACP’s marks was “in connection with the sale, offering for sale, distribution, or advertising of any goods or services.” 15 U.S.C. § 1114(1)(a); see also id. § 1125(a)(1) (requiring mark be used “in connection with any goods or services”). The NAACP urges us to give this requirement a “broad construction,” Appellee’s Br. at 18, but that construction noncommercial would expressive expose and to liability charitable a wide array of 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. 10 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 11 of 36 At least five of our sister circuits have interpreted this element as protecting from liability all noncommercial uses of marks. Farah v. Esquire Magazine, 736 F.3d 528, 541 (D.C. Cir. 2013); Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1052-54 (10th Cir. 2008); Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676-77 (9th Cir. 2005); Taubman Co. v. Webfeats, 319 F.3d 770, 774 (6th Cir. 2003); Porous Media Corp. v. Pall Corp., 173 F.3d 1109, 1120 (8th Cir. 1999). But see United We Stand, 128 F.3d at 89-90. We have not taken a position on whether “in connection with” goods or services indicates a commercial use. Lamparello, 420 F.3d at 313-14. At the very least, reading the “in connection with” element to take in broad swaths of noncommercial speech would be an “overextension” of the Lanham Act’s reach that would “intrude on First Amendment Taubman, 319 values.” F.3d at 774 Rogers, 875 (stating F.2d that at the 998; see “Lanham also Act is constitutional because it only regulates commercial speech”). It is true that neither of the Lanham Act’s infringement provisions explicitly mentions commerciality. Lamparello, 420 F.3d at 314. Still, this provision must mean something more than that the mark is because being the used in commerce infringement in provisions the in constitutional § 1114(1)(a) sense, and § 1125(a)(1) include a separate Commerce Clause hook. Bosley, 403 11 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 12 of 36 F.3d at 677; Int’l Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359, 363-64 (4th Cir. 2003); United We Stand, 128 F.3d at 92-93. Although this case does not require us to hold that the commercial speech doctrine is in all respects synonymous with the “in connection with” element, we think that doctrine provides much the best guidance in applying the Act. The “in connection with” description of element in different fact types of reads very commercial much like actions: a “in connection with the sale, offering for sale, distribution, or advertising of any goods or services.” 15 U.S.C. § 1114(1)(a) (emphasis added). Use of a protected mark as part of “speech that does no more than propose a commercial transaction” thus plainly falls within the Lanham Act’s reach. United States v. United Foods, Inc., 533 U.S. 405, 409 (2001). Courts also look to the factors outlined in Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 66-67 (1983): whether the speech is an advertisement; whether the speech references a particular good or service; and whether the speaker (the alleged infringer) has a demonstrated economic motivation for his speech. Greater Balt. Ctr. for Pregnancy Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 285 (4th Cir. 2013) (en banc). These are not 12 exclusive factors, and the Appeal: 14-1568 Doc: 38 presence or Filed: 05/19/2015 absence of any Pg: 13 of 36 of them does not necessitate a particular result. In the context of trademark infringement, the Act’s purpose, as noted, is to protect consumers from misleading uses of marks by competitors. Thus if in the context of a sale, distribution, identifier, or we advertisement, can a confidently mark state is used that as the a use source is “in connection with” the activity. Even the Second Circuit, which rejected noncommerciality as an invariable defense to Lanham Act liability, conceded that a “crucial” factor is that the infringer “us[ed] the Mark not as a commentary on its owner, but instead as a source identifier.” United We Stand, 128 F.3d at 92. The danger of allowing the “in connection with” element to suck in speech strained or transactional on political tangential activity and social association should issues thus with be a through some commercial evident. Courts or have uniformly understood that imposing liability under the Lanham Act for such speech is rife with the First Amendment problems. Finally, connection in order with” goods to or determine services, whether we the must use is consider “in what qualifies as a good or service. The Lanham Act does not directly define either term, but we can deduce their meaning from other defined terms and common usage. A “good” is best understood as a valuable product, physical or otherwise, that the consumer may 13 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 14 of 36 herself employ. See 15 U.S.C. § 1127 (noting that a mark may be used in commerce in relation to a good when placed on a good, its container, its tag, or its associated documents); Black’s Law Dictionary 809 (10th ed. 2014) (defining “goods” as “[t]hings that have value, whether tangible or not”). A service is a more amorphous concept, “denot[ing] an intangible commodity in the form of human effort, such as labor, skill, or advice.” Black’s Law Dictionary Lanham Act to protect 1576. Because consumers Congress from intended confusion in the the marketplace, it is probable that the Act is meant to cover a wide range of products, whether “goods” or “services.” See Yates v. United States, 135 S. Ct. 1074, 1082 (2015) (“Ordinarily, a word's usage accords with its dictionary definition. In law as in life, however, the same words, placed in different contexts, sometimes mean different things.”). It is clear, therefore, that despite the need to reconcile the reach of the Lanham Act with First Amendment values, “goods or services” remains a broad and potentially fuzzy concept. That is yet another reason why the “in connection with” language must denote a real nexus with goods or services if the Act is not to fatally collide with First Amendment principles. C. The second element in establishing Lanham Act liability is whether the use of the trademark is “likely to cause confusion” 14 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 15 of 36 among consumers regarding the source or sponsorship of the goods or services. 15 U.S.C. §§ 1114(1)(a) & 1125(a)(1)(A). Here it is important to remember that “trademark infringement protects only against mistaken purchasing decisions and not against confusion generally.” Lang v. Ret. Living Publ’g Co., 949 F.2d 576, 583 (2d Cir. 1991) (quotation marks omitted); see also Bosley, 403 F.3d at 677. That is because a trademark “only gives the right to prohibit the use of it so far as to protect the owner’s good will against the sale of another’s product as his.” Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (emphasis added). This court frameworks to and assess others the have employed likelihood of any number confusion, of generally balancing a slew of relevant factors. See, e.g., Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). This court considers “the strength of the [trademark holder’s] mark, the degree of similarity between the two marks, the similarity of the goods they identify, the similarity of the facilities used in the businesses, [infringer’s] the intent, and similarity the of presence the of advertising, actual the confusion,” Anheuser-Busch, Inc. v. L. & L. Wings, Inc., 962 F.2d 316, 320 (4th Cir. 1992), as well as the “quality of the [infringer’s] product,” and the “sophistication of the consuming public,” George & Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 393 15 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 16 of 36 (4th Cir. 2009). These factors are not a “rigid formula” but rather “only a guide,” Anheuser-Busch, 962 F.2d at 320, and each factor may be more or less relevant or important for any given case, Lamparello, 420 F.3d at 314-15. In conducting such an inquiry, which is inherently factbound and context dependent, we must bear in mind the purpose behind it -- preventing consumer confusion of the infringer’s goods or services with those of the trademark holder’s. When the infringer’s intent is something other than piggybacking off a mark holder’s success by tricking consumers into purchasing his goods instead, the other factors must be evaluated in light of that intent and purpose. See Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 261 (4th Cir. 2007) (“An intent to (quotations parody is marks not an omitted)). intent Although to confuse finding the an public.” alternative intent does not prevent us from applying the factors, it does “influence[] the way in which [they] are applied.” Id. Marks compare used make to “the parody, satirize, multi-factored criticize, inquiry comment, under or Pizzeria Uno . . . at best awkward” and require that the use be assessed in that context. Anheuser-Busch, 962 F.2d at 321 (quotation marks omitted). For example, the strength of the mark and the similarity between the marks often work in reverse for cases of parody and satire as compared to a standard infringement case. 16 Appeal: 14-1568 Louis Doc: 38 Vuitton, Filed: 05/19/2015 507 F.3d at Pg: 17 of 36 261. “The keystone of parody is imitation,” Anheuser-Busch, 962 F.2d at 321, and the similarity -- with key differences -- between the original mark and the parody may only enhance the effect of the latter and the “strong mark’s fame and popularity [are] precisely the mechanism[s] by which likelihood of confusion is avoided,” Louis Vuitton, 507 F.3d at 261. As with the “in connection with” element, the “likelihood of confusion” test, if misapplied, can implicate free speech concerns. When the “use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source,” restricting speech does not serve the purpose of the Lanham Act. New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 306-08 (9th Cir. 1992). Indeed, criticism or parody of a mark holder would be difficult indeed without using the mark. Id. Trademark protections exist neither to allow companies to protect themselves from criticism nor to permit them to “control language.” Skippy, 214 F.3d at 462 (quoting Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1710-11 (1999)). Even some amount of “actual confusion” must still be weighed against the interest in a less fettered marketplace of social issues speech. See Rogers, 875 F.2d at 1001. 17 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 18 of 36 III. In applying the above principles, we think the district court made several errors. Those mistakes extended the Lanham Act beyond the purposes it was intended to serve. A. In finding that Radiance’s use of the NAACP’s marks was “in connection with” goods or services, the district court erred in several respects. Radiance article To begin, appeared the in a court held Google that search because for the the term “NAACP,” it diverted “Internet users to Radiance’s article as opposed to the NAACP’s websites,” which thereby created a connection to the NAACP’s goods and services. Radiance Found., Inc. v. NAACP, 25 F. Supp. 3d 865, 884 (E.D. Va. 2014). But typically the use of the mark has to be in connection with the infringer’s goods or services, not the trademark holder’s. See Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1053-54 (10th Cir. 2008) (stating that “the defendant in a trademark infringement . . . case must use the mark in connection with the goods or services of a competing producer, not merely to make a comment on the trademark owner's goods or services”). If the general rule was that the use of the mark merely had to be in services, connection then even with the the most trademark offhand 18 holder’s mention of a goods or trademark Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 19 of 36 holder’s mark could potentially satisfy the “in connection with” requirement. That interpretation would expand the requirement to the point that it would equal or surpass the scope of the Lanham Act’s “in commerce” jurisdictional element. This would not only make the jurisdictional element superfluous, but would hamper the ability of the “in connection with” requirement to hold Lanham Act infractions within First Amendment limits. In People for the Ethical Treatment of Animals v. Doughney, we stated that an infringer “need only have prevented users from obtaining or using [the trademark holder’s] goods or services, or need only have connected the [infringing] website to other’s goods or services” in order to satisfy the “in connection with” requirement. 263 F.3d 359, 365 (4th Cir. 2001). But that rule applies specifically where the infringer has used the trademark holder’s mark Radiance’s in a websites domain used an name. Id. NAACP at mark 365-66. in its Neither domain of name. Rather, Radiance used the NAACP’s marks only in the title and body of an article criticizing the NAACP. Nothing in PETA indicates that the use of a mark in the course of disseminating such an idea is on that account sufficient to establish the requisite relationship to goods or services. PETA simply does not govern the application of the “in connection with” element in this case. 19 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 20 of 36 The district court proceeded to find that Radiance’s use of the NAACP’s marks was also in connection with Radiance’s goods or services. Radiance Found., 25 F. Supp. 3d at 884-85. But the court’s analysis failed to demonstrate a sufficient nexus between the specific use of the marks and the sale, offer for sale, distribution, services that the or advertisement court invoked. of The any court of the first goods found or that there was a sufficient nexus “with Radiance’s own information services” because Radiance “provided information” on its website. Id. at 884. That ruling, however, neuters the First Amendment. The provision of mere “information services” without any commercial or transactional component is speech -- nothing more. In the alternative, the court held that Radiance’s use of the NAACP’s marks was in connection with goods or services, because the use was “part of social commentary or criticism for which they solicit donations and sponsorship.” Id. The NAACP echoes the district court, arguing that the transactional nature of the billboard campaign and Radiance’s fundraising efforts place Radiance’s use of the marks “comfortably within” the reach of the “in connection with” element. Appellee’s Br. at 24-26. We need not address this point with absolute pronouncements. Suffice it to say that the specific use of the marks at issue here was too 20 attenuated from the donation Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 21 of 36 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 comprised of materials. That each Radiance articles, the website’s videos, protected marks and content, which multimedia appear was advocacy 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. The Supreme Court has warned “that charitable appeals for funds . . . involve a variety of speech interests . . . that are within the protection of the First Amendment.” Vill. of Schaumburg v. Citizens for a Better Env't, 444 U.S. 620, 632 (1980). Such solicitation, the Court stated, is not a “variety of purely commercial speech.” Id. Courts are thus well-advised to tread cautiously when a trademark holder invokes the Lanham 21 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 22 of 36 Act against an alleged non-profit infringer whose use of the trademark requests holder’s for marks money. may Again, be this only is tenuously not to say related that in to all instances a solicitation by a non-profit is immune from Lanham Act liability. A solicitation may satisfy the “in connection with” element if the trademark holder demonstrates a sufficient nexus between the unauthorized use of the protected mark and clear transactional activity. Such a nexus may be present, for example, where the protected mark seems to denote the recipient of the donation. However, where, as here, the solicitations are not closely related to the specific uses of the protected marks, we are compelled to conclude that the district court erred in ruling that the “in connection element” was met. B. The district court likewise considered the likelihood of confusion from Radiance’s use of the marks. First and foremost, it based its finding in great part on whether consumers thought “NAACP” in fact stood for “National Association for the Abortion of Colored People.” Radiance Found., 25 F. Supp. 3d at 887-89 (relying on survey evidence). Trademark infringement provisions do not because protect marks against are not confusion goods or about the services marks but themselves instruments to identify goods and services. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir. 2007) (“The 22 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 23 of 36 misspellings pointed out by LVM [in the Vuitton name] are far more likely in this context to indicate confusion over how to spell the product name than any confusion over the source or sponsorship of the ‘Chewy Vuiton’ dog toys.”). Thus confusion about what a particular trademark says or looks like is not relevant for infringement claims. We may certainly account for similarities between the trademark holder’s and infringer’s marks in the likelihood of confusion analysis, but only in the context of how those similarities create confusion about the source of any products the marks identify. 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 abortion. people who Radiance “[I]ndignation is took issue Found., 25 not with F. confusion,” the Supp. Girl NAACP 3d Scouts supporting at of 888-89. U.S. v. Personality Posters, Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969), 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. 23 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Political discourse is Pg: 24 of 36 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.” United States v. Alvarez, 132 S. Ct. 2537, 2556 (2012) (Breyer, J., concurring in the judgment). The NAACP is a renowned civil rights organization with numerous mechanisms for connecting with its membership and the public. megaphones Organizations all their of own. its size “Actual and confusion” stature as to possess 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. See Rogers v. Grimaldi, 875 F.2d 994, 1001 (2d Cir. 1989). The district court also concluded that some consumers might be confused about an affiliation between the authors of the article and the NAACP. Radiance Found., 25 F. Supp. 3d at 889. But 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 resembling employing a a NAACP as the descriptive modified or object version of nominative of 24 the Radiance’s fair name. use criticism, albeit Admittedly, by the Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 25 of 36 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 perpetually 869. churned sexist, Intemperate risks confusion, thereby from adverse violent and actionable out worse creating by often and pornographic as the permitting assessments. the racist, Hollywood.” commentary paradox that companies to Indeed, anti-Christian, “‘[m]uch is, holding criticism shield useful J.A. it equals themselves social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark.’” CPC Int’l, Inc. v. Skippy Inc., 214 F.3d 456, 462 (4th Cir. 2000) (quoting New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 307 (9th Cir. 1992)). It remains essential in any analysis of confusion to consider fully the purpose with which the mark was being used. The trial court did entertain the possibility of parody, but once it found that Radiance had not engaged in a successful parody, it ended its inquiry there. Radiance Found., 25 F. Supp. 3d at 891-93. If not quite parody, the use of “National Association for the Abortion of Colored People” in this context 25 Appeal: 14-1568 Doc: 38 may be Filed: 05/19/2015 more akin Pg: 26 of 36 to satire, which “works by distort[ing] . . . the familiar with the pretense of reality in order to convey an underlying critical message.” Farah v. Esquire Magazine, 736 F.3d 528, 537 (D.C. Cir. 2013) (quotation marks omitted). Whatever the label affixed to the article, Radiance’s twist on the famous moniker follows in the same vein as articles that refer to the NRA as the “National Republican Association” or the ACLU as the “Anti-Christian Lawyers Union.” Amicus Br. of Elec. Frontier Found. & ACLU of Va. at 3-4, 6-7. Biting, surely; nonetheless distortive, effective at certainly; conveying Radiance’s sharply what it ploy was was that Radiance wished to say. The implications for the likelihood of confusion factors are thus obvious: parody or satire or critical opinion generally may be more effective if the mark is strong and the satirical or critical version is similar to the original. 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. It is important moreover to pay sufficient attention to the full context in which the mark was used, which diminishes the likelihood of confusion about source even further. The domain names and webpage headings clearly denote other organizations: The Radiance Foundation or TooManyAborted. For each site, this 26 Appeal: 14-1568 post Doc: 38 was one Filed: 05/19/2015 of dozens of Pg: 27 of 36 articles on social and political issues. Suppose, however, a viewer caught no more than the title of the article: “NAACP: National Association for the Abortion of Colored People.” The claim against Radiance would still not lie. Titles, as part of expressive works, “require[] more protection than the labeling of ordinary” goods. Rogers, 875 F.2d at 998. For consumers understand and expect titles to pertain to the contents of the underlying work rather than authorship or the publisher. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002); Rogers, 875 F.2d at 999-1000. Provided the title is connected to and not misleading about the contents and does not use the mark in a way that clearly suggests authorship, see Rogers, 875 F.2d at 999, use of a mark in a title will generally not result in the type of consumer confusion necessary to support infringement claims. In this case, the title related to and conveyed the subject of the article: the NAACP and Radiance’s views of its alleged stance on abortion. The use of the satirical modification of the true NAACP name was designed, as many titles are, to be eye-catching and provocative in a manner that induces the reader to continue on. We cannot find that use of the NAACP marks in the title of the Radiance article created a likelihood of confusion as to the piece’s authorship or affiliation. 27 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 28 of 36 We have identified individual difficulties with appellee’s position, but it is well to understand the matter in its totality. The trial court found that using marks in a highly critical actions article that constituted lambasts trademark the NAACP for infringement its views because the and site solicits financial support for its activities, albeit attenuated from the use of the mark, and some consumers may be confused about the NAACP’s true name and political positions. We need not go so far as to say that social commentary solicitations 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. 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. IV. The district court further held that Radiance diluted the “NAACP” and “National Association for the Advancement of Colored People” trademarks by tarnishing them in violation of 15 U.S.C. § 1125(c). Radiance Found., Inc. v. NAACP, 25 F. Supp. 3d 865, 899 (E.D. Va. 2014). We respectfully disagree. Radiance’s use of the marks was undeniably to criticize 28 the NAACP’s perceived Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 29 of 36 position on abortion, thus falling squarely within the statute’s explicit exclusions. See 15 U.S.C. § 1125(c)(3). A. Whereas the law of trademark infringement is “motivated by an interest product’s in protecting source, the law consumers” of from dilution confusion defends the as to a trademark itself. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 429 (2003); see also Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1012 (9th Cir. 2004) (“The point of dilution law is to protect the owner’s investment in his mark.”). Specifically, the law allows “the owner of a famous mark that is distinctive” to seek an injunction where another person’s use of a mark “is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” 15 U.S.C. § 1125(c)(1). Dilution by blurring is an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Id. § 1125(c)(2)(B). By contrast, dilution by tarnishment -- the theory at issue here -- is an association “that harms the reputation of the famous mark.” Id. § 1125(c)(2)(C). To state a prima facie claim of dilution by tarnishment, therefore, the NAACP must satisfy four elements: 29 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 30 of 36 (1) that [it] owns a famous mark that is distinctive; (2) that [Radiance] has commenced using a mark in commerce that allegedly is diluting the famous mark; (3) that a similarity between [the diluter’s] mark and the famous mark gives rise to an association between the marks; and (4) that the association is likely . . . to harm the reputation of the famous mark. Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 168 (4th Cir. 2012) (quoting Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 264-65 (4th Cir. 2007)). The first three elements are met here: the marks Radiance used in commerce were either identical or highly similar to the NAACP’s undoubtedly famous marks. As for the fourth element, harming a famous mark’s reputation means “creat[ing] consumer aversion to the famous brand.” Rosetta Stone, 676 F.3d at 167. Such aversion may be shown when the famous mark is “linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context.” Id. (quoting Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 489 (5th Cir. 2004)); see also Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 111 (2d Cir. 2010). Radiance has not challenged the district court’s finding that the article was likely to harm the NAACP’s marks. Indeed, the whole point of the article was to criticize the NAACP, and Radiance attempted to accomplish that goal in part by playing 30 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 31 of 36 off the NAACP’s name. The NAACP thus established a prima facie case of dilution by tarnishment. B. However, that does not end the inquiry. The law provides three broad, overlapping categories within which any use of a famous mark, even if likely to cause harm or blurring, is not actionable: fair use; news reporting and news commentary; and noncommercial use. 15 U.S.C. § 1125(c)(3). Radiance asserts that its use these of the NAACP’s affirmative speech falls exclusions, defenses. plainly we marks have Because within no qualifies the need we fair to for protection hold and that under Radiance’s noncommercial address Radiance’s use “news reporting and news commentary” defense. The first nominative connection or exclusion covers descriptive fair with,” among “[a]ny use,” other fair and things, use, including “including use “identifying a in and parodying, criticizing, or commenting upon the famous mark owner or the goods or § 1125(c)(3)(A)(ii) services (emphasis of the added). famous A mark owner.” descriptive fair Id. use “applies when the [dilution] defendant is using a trademark in its primary, descriptive sense to describe the defendant's goods or services,” whereas “nominative fair use comes into play when the defendant uses the famous mark to identify or compare the trademark owner's product.” Rosetta 31 Stone, 676 F.3d at 169 Appeal: 14-1568 Doc: 38 (quotation source Filed: 05/19/2015 marks for the omitted). [user’s] § 1125(c)(3)(A). That is, Pg: 32 of 36 No use own may goods the be or fair “a designation services.” use exclusion 15 of U.S.C. does not provide a safe harbor for one who uses another’s famous mark as a trademark. See Louis Vuitton, 507 F.3d at 266. Finally, good faith is a “common component” of fair use analysis. Rosetta Stone, 676 F.3d at 169-70. The NAACP, as the district court recognized, is an advocacy organization. See Radiance Found., 25 F. Supp. 3d at 872. As such, stated it takes positions mission; the on public organization issues exists on in behalf part to of its be for things. The Radiance article used the NAACP’s marks to comment upon what it sees as the policies the NAACP supports or does not support, as the case may be. Within the context of the article, the use of the NAACP’s famous marks unquestionably framed and referenced the NAACP’s policy positions, or at least Radiance’s view of referred what to those the positions NAACP’s are. purported The support article for repeatedly abortion and Planned Parenthood, using sexual and other graphic metaphors to hammer the point home. Even if we were to take the title out of context and view it separately from the rest of the article, the use was still nominative, because it explicitly referred to what 32 Appeal: 14-1568 the Doc: 38 author Filed: 05/19/2015 believes the NAACP Pg: 33 of 36 stands for: the abortion of African American children. * The referring district to the court NAACP as also the reiterated “National its belief Association for that the Abortion of Colored People” is not a parody. Id. at 897. 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. 15 U.S.C. § 1125(c)(3)(A)(ii). Regardless of whether Radiance’s use of the NAACP’s marks legally qualifies as parody, it is abundantly clear that Radiance used “NAACP” in conjunction with “National Association for the Abortion of Colored People” to comment upon and criticize the NAACP for its perceived position on abortion and other issues affecting the African American community. “The National Association for the Abortion of Colored People has no moral ground to stand upon,” the article goes, “just quick sand oozing with the blood of those most discriminated against. The NAACP’s covert and overt support of Planned Parenthood negates any other human rights they purport to defend.” J.A. 870. It is difficult to imagine what the article is if not criticism. We cannot say, and the * Radiance does not assert that the use was descriptive fair use, nor did the district court comment upon a descriptive theory. We thus do not consider any argument that the use here was descriptive and fair. 33 Appeal: 14-1568 Doc: 38 district court Filed: 05/19/2015 erred in Pg: 34 of 36 holding, that Radiance’s use of the NAACP’s famous marks was not a fair use. C. The final exclusion protects “[a]ny noncommercial use of a mark.” 15 U.S.C. refers to the Lamparello v. § 1125(c)(3)(C). First Amendment Falwell, 420 The term commercial F.3d 309, 313 “noncommercial” speech (4th doctrine. Cir. 2005). Commercial speech is “‘speech that does no more than propose a commercial transaction.’” Harris v. Quinn, 134 S. Ct. 2618, 2639 (2014) (quoting United States v. United Foods, Inc., 533 U.S. 405, 409 (2001)); see also Greater Balt. Ctr. for Pregnancy Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 284 (4th Cir. 2013) (en banc). In determining whether speech is commercial, we consider several factors: (1) whether the speech is an advertisement; (2) whether speech refers to specific products or services; (3) whether the speaker has an economic motivation for the speech; and (4)”the viewpoint of the listener,” i.e. whether the listener would perceive the speech as proposing a transaction. Greater Balt., 721 F.3d at 285-86. The factors are cumulative, but, again, the absence of any particular element does not necessarily render the speech noncommercial. Id. The district court held that because Radiance “offered various opportunities for visitors . . . to donate to Radiance, pay to sponsor billboards, secure 34 license content, or erect Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 35 of 36 state-specific webpages for a fee,” the use of the NAACP’s marks was commercial. Radiance Found., 25 F. Supp. 3d at 899. We think however, that the above factors mitigate against a finding of commerciality. advertisement. The Nowhere article in in the contention piece did it was offer not the an 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. The key here is the viewpoint of a reasonable reader. A person navigating to the article, even if through a Google search for “NAACP,” is highly unlikely to read the article as advertising a Radiance service or proposing a transaction of any kind. 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 35 Appeal: 14-1568 Doc: 38 Filed: 05/19/2015 Pg: 36 of 36 purposes of comparison, criticism, point of reference or any other such purpose without using the mark.” New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 306 (9th Cir. 1992). 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. V. In sum, and for the aforementioned reasons, the plaintiff’s expression in trademark rights. injunction and no way We remand infringed hereby with upon vacate directions or diluted the that defendant’s district the court’s defendant’s Lanham Act counterclaims be dismissed. VACATED AND REMANDED 36