EDVA Court Reminds That Parody Is Not an Absolute Defense to Trademark Infringement

In a recent decision following a bench trial in the Eastern District of Virginia, Judge Jackson reminds a religious group that not all speech is protected by the First Amendment or parody. The NAACP (National Association for the Advancement of Colored People) established claims for trademark infringement and dilution by tarnishment against The Radiance Foundation, Inc., a Christian anti-abortion organization, and its founder. The Court rejected the argument that use of the NAACP’s marks was parody, but reminds in this opinion that neither parody nor the First Amendment grant blanket right to use another’s mark freely. The Radiance Foundation, Inc., et al. v. Nat’l Assoc. for the Advancement of Colored People, No. 2:13cv53, 2014 U.S. Dist. LEXIS 57431 (E.D. Va. Apr. 24, 2014)(Jackson, J.).

Plaintiffs published three online articles criticizing the NAACP’s position on abortion, each using the “NAACP” mark as well as the phrase “National Association for the Abortion of Colored People,” suggesting this is the full name of the NAACP. Plaintiffs filed a complaint for declaratory judgment and the NAACP filed counterclaims for trademark infringement and for dilution by tarnishment. The Court held that the NAACP established its claims for trademark infringement and dilution by tarnishment.

Radiance raised several defenses, including a defense of parody. Judge Jackson quoted the Fourth Circuit:

A parody must convey two simultaneous–and contradictory–messages: that it is the original, but also that it is not the original and is instead a parody. This second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus, a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect. Op. at 56-57(quoting Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007)).

Finding no parody in use of the phrase “National Association for the Abortion of Colored People” or the “NAACP” mark, Judge Jackson noted the phrase lacks many of the traditional elements of parody and is almost identical to the NAACP’s name save for one word. The change to “Abortion” did not create a satire of the NAACP, its services or its consumers. Rather, when used in connection with the unaltered “NAACP” acronym, that change actually created the source confusion. The phrase appears to be the name of a real organization. “National Association for the Abortion of Colored People” does not clearly convey at once that it is the NAACP but also that it is not the NAACP. Radiance implied that this is what NAACP stands for, but criticized the NAACP without pretending to be the NAACP.

Judge Jackson reiterated that parody is not an absolute defense to trademark infringement. Even if Plaintiffs’ use was parody, this would merely influence application of the likelihood of confusion factors—effective parody would diminish any likelihood of confusion. Judge Jackson ultimately concluded that these factors were not undermined by the parody argument. By footnote, he similarly dismissed the parody defense with respect to the dilution claim—such a defense implicates First Amendment protections but these do not confer an absolute right to use an owner’s mark in parody. Because there was neither parody nor any attempt by the NAACP to constrain free speech, Judge Jackson stated that no First Amendment concerns need be addressed.

Radiance also defended that its use of the NAACP marks constituted protected speech under the First Amendment. When expressive works are at issue, courts should weigh the public interest in free expression against that of avoiding consumer confusion. Use of another’s trademark is entitled to First Amendment protection when part of a communicative message, but not when used as a source identifier. Judge Jackson reiterated, however, that “engage[ing] in social commentary does not provide absolute immunity from liability under the Lanham Act.” Op. at 64. The Court held that a determination of trademark infringement did not violate Radiance’s right to free speech. It is not prevented from criticizing the NAACP’s positions or activities. Radiance is simply enjoined from doing so in a manner likely to cause source or sponsorship confusion.

Judge Jackson found Plaintiffs’ other defenses similarly unpersuasive. Radiance argued use of the NAACP’s marks was nominative fair use. Simply put, for nominative use to be fair use, it must be nominative. “National Association for the Abortion of Colored People” does not name the NAACP nor did “NAACP,” when adjacent to that phrase, reference to the actual NAACP. For the same reasons, the news reporting and commentary defense was not available to Plaintiffs. The articles went beyond news reporting and instead associated the NAACP marks with the name of a fictitious organization that supported abortion. Finally, Radiance could not avail itself of a noncommercial use defense—the articles were used in connection with offering fundraising and outreach services.

Victory for the NAACP is quite limited, however. Although the Court did conclude that the NAACP was entitled to recover costs of the action and mayhave been entitled to recover monetary damages for its claims, the NAACP failed to establish that Radiance profited from use of its marks or that the NAACP suffered any damages. The Court did order injunctive relief, but that relief is very narrow: “a permanent injunction against any use of ‘National Association for the Abortion of Colored People’ that creates a likelihood of confusion or dilution.” Op. at 89 (emphasis added). Plaintiffs are still free to attack the NAACP and its failure to take a stance on abortion so long as they refrain from causing confusion as to source or sponsorship and a dilutive association.