A federal appellate court recently sorted through a combustible mix of abortion, the NAACP and the First Amendment to fashion a ruling that will have a significant impact on trademark law and the concept of “commercial speech.” 

So let’s back up for a minute.  The plaintiff in the case was an organization called “The Radiance Foundation.”  The Radiance Foundation, established by Ryan Bomberger, is a non-profit organization focused on educating and influencing the public about issues impacting the African American community. Radiance addresses social issues from a Christian perspective. It publishes two Web sites -- TheRadianceFoundation.org and TooManyAborted.com.  The Web site features articles on a variety of topics, including abortion.  The Radiance Foundation takes a pro-life stance. 

In January 2013, Bomberger authored an article criticizing the NAACP's annual Image Awards, entitled "NAACP: National Association for the Abortion of Colored People." 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.  The TooManyAborted.com site posted the headline "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.  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." 

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.  In response, Radiance 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 federal and state law. 

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 created a likelihood of confusion among consumers. The “goods and services” referred to the donation button. In the trial court’s view, the ability to donate essentially turned the Web site into a commercial speaker.   

The court of appeals reversed.  It was troubled by the idea that a non-profit organization’s merely adding a donation button could transform speech otherwise protected by the First Amendment into unprotected “commercial speech.”  The court noted: “If the general rule was that the use of the mark merely had to be in connection with the trademark holder's goods or services, then even the most offhand mention of a trademark 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.” 

But the appellate court also was unwilling to find an automatic rule going the other way.  In its view, “[w]e 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.”  

So the issue isn’t settled in stone.  But the court’s ruling should come as some comfort to non-profits that want to make political statements and fund raise on the same page.