Radiance Foundation, Inc. v. National Ass'n for the Advancement of Colored People
25 F. Supp. 3d 865
E.D. Va.2014Background
- Plaintiffs Radiance Foundation and Bomberger sued for declaratory judgment that use of NAACP marks does not infringe or dilute, and is protected speech; NAACP counterclaims assert trademark infringement and dilution under Lanham Act and Virginia law.
- The dispute centers on a January 2013 article using “NAACP” and the phrase “National Association for the Abortion of Colored People,” posted on Radiance’s sites and LifeNews.com, with related fundraising and billboard services.
- NAACP owns valid, famous marks including “NAACP,” “National Association for the Advancement of Colored People,” and the Scales of Justice Seal, used in interstate commerce since 1909.
- Radiance and Bomberger used those marks in connection with information services and fundraising on the Radiance and TooManyAborted sites, including links to donations and billboard licensing; NAACP alleged likelihood of confusion and dilution.
- Court conducted nine-factor likelihood of confusion analysis and dilution framework, finding liability for infringement and tarnishment with respect to the NAACP marks and National Association for the Abortion of Colored People, but not for Image Awards or the Scales of Justice Seal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement liability of NAACP marks | Radiance/Bomberger deny infringement | NAACP asserts use in commerce caused confusion | Infringement established as to NAACP marks |
| Trademark dilution by tarnishment | NAACP claims dilution by tarnishment from the Abortion phrase | NAACP marks not tarnished by fair use or noncommercial use | Dilution by tarnishment found for NAACP marks |
| First Amendment defense to infringement | Use protected speech | Speech not protected when likely to confuse | First Amendment does not bar infringement given likelihood of confusion; not protected in this context |
| Declaratory relief appropriate | Relief sought would clarify rights | Counterclaims require analysis; no need for declaratory relief | Declaratory relief denied |
Key Cases Cited
- Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012) (lanham act infringement requires ownership of valid mark and likelihood of confusion)
- George & Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383 (4th Cir. 2009) (nine-factor confusion test; factors guide, not rigid formula)
- PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001) (parodic and nominative uses; relevance to noncommercial use)
- Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) (parody analysis; parody can defeat likelihood of confusion if elements shown)
- Anheuser-Busch, Inc. v. Balducci Prods., 28 F.3d 769 (8th Cir. 1994) (relevance of parody and confusion considerations in dilution/infringement)
- Lombardi, Inc. v. Smithfield, 11 A.3d 1180 (Del. 1989) (irreparable harm as consideration in equitable relief)
- Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490 (2d Cir. 1989) (First Amendment considerations balance with consumer confusion)