Trademark Infringement or First Amendment Right of Freedom of Speech?

Internet First Amendment Trademark
By Yunnan Jiang – Edited by Paulius Jurcys Brief for the Fourth Circuit as Amicus Curiae Supporting Plaintiffs-Appellants, the Radiance Foundation, Inc. et al. v. National Association for the Advancement of Colored People, No. 14-1568 (4th Cir.) Brief hosted by the Washington Post. free-speechOn October 11, the Electronic Frontier Foundation (“EFF”) and the American Civil Liberties Union of Virginia, Inc. (“ACLU”) filed a joint amicus curiae brief in the U.S. Court Of Appeals For The Fourth Circuit for the Radiance Foundation, Inc. et al. v. National Association for the Advancement of Colored People, No. 14-1568. In its brief, the EFF and the ACLU urge that “trademark laws should not be used to impinge the First Amendment rights of critics and commentators”. The brief argues that the use of the names of organizations to comment, critique, and parody, is constitutionally protected by the speaker’s First Amendment right of freedom of expression. They further assert that such use of trademarks is “noncommercial”. By holding the use of a trademark in a blog post title liable for trademark infringe and dilution, the brief argues that the District Court allows trademarks to trump freedom of speech. The EFF and the ACLU brief and the potential implications of the District Court decision are available from the EFF website and the EFF post. The District Court decision can be found on Google scholar. The Washington Post provides coverage of the trademark law community’s reaction to the brief. In a blog post titled “NACCP: National Association for the Abortion of Colored People,” Radiance Foundation Inc. (“Radiance”) stated that the National Association for the Advancement of Colored People (“NAACP”) holds “all things liberal, most things socialistic, and nothing pro-life.” On April 24th, 2014, the U.S. District Court for the Eastern District of Virginia found Radiance liable for trademark infringement and trademark dilution for its use of NAACP’s trademark in its blog post. Radiance Found., Inc. v. NAACP, 2014 U.S. Dist. LEXIS 57431. The court ruled that Radiance violated the Lanham Act, provisions 15 U.S.C. §1114 and 1125, as well as Virginia Code §59.1-92.12(i), VA. Code Ann. § 59.1-92.12(i) (West 2011). Radiance appealed, and the EFF and ACLU filed an amicus brief in support of Radiance. Building on three prior Circuit Court cases holdings that “artistic or political use of a trademark” and “literary titles” do not violate the Lanham Act “so long as the level of relevance to the underlying work is merely . . . above zero,” the EFF and the ACLU argue that Radiance’s use of the term “NAACP” in an article title was not infringing on a confusion theory. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), and E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir 2008). The brief reasons that “Radiance’s use of NAACP’s trademark in the title of an article was directly relevant to the article’s political goal and did not explicitly mislead as to the source or content of the article.”  The brief emphasizes that Rogers, Mattel, and E.S.S. Entertainment showed “that the First Amendment broadly protects cultural reference, commentary, criticism and parody, including when such speech uses anther’s trademark.” The EFF and the ACLU then argues that Radiance’s use of the term “NAACP” in an article title was not trademark dilution because it was a “noncommercial use” defined in 15 U.S.C. § 1125(c)(3) and thus exempted from Lanham Act action. Citing previous court decisions, the brief explained that the trademark dilution cause of action is limited to commercial advertising and excludes fully protected speech in newspapers, magazines, films, songs and similar media. Thus Radiance’s use of the NAACP’s trademark to criticize the practices of the organization and to comment on how abortion affects the African-American community is exempted under 15 U.S.C. § 1125(c)(3)(A)(ii). In conclusion, the EFF and the ACLU have adopted the position that trademark laws should not be used impinge the First Amendment rights of critics and commentators and that Radiance’s criticism of the NAACP contained in its post title was constitutionally protected. Furthermore, the brief argues that Radiance’s political commentary is not “commercial use of a mark” under § 1125(c)(3) and thus does not constitute trademark dilution. The brief cautions that the district court’s decision to hold trademark infringement may lead to censorship that threatens a wide range of expression that mentions or criticizes a trademark.          Yunnan Jiang is a 1L at Harvard Law School.