Case 2:13-cv-00053-RAJ-DEM Document 89 Filed 04/24/14 Page 1 of 52 PageID# 3011
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Norfolk Division
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`THE RADIANCE FOUNDATION, INC. et al.,
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`Plaintiffs,
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`NATIONAL ASSOCIATION FOR THE
`ADVANCEMENT OF COLORED PEOPLE,
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`Defendant.
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`CIVIL ACTION NO. 2:13cv53
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`MEMORANDUM OPINION AND ORDER
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`This Memorandum Opinion and Order is issued aftera bench trial in the above-styled
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`matter to resolve trademark infringement and trademark dilution claims.
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`On February 1, 2013, the Radiance Foundation, Inc. ("Radiance") and Ryan Bomberger
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`("Bomberger") brought this action for declaratoryjudgment against the National Association for
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`the Advancement of Colored People ("Defendant" or "NAACP"). Radiance and Bomberger
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`(together referred to as "Plaintiffs") moved this Courtto enterjudgment declaring that their use
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`of certain marks allegedly owned by theNAACP was not infringing, tarnishing or diluting in
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`violation of common lawor the Lanham Act. Radiance and Bomberger also requested thatthe
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`Court declare their use of these trademarks protected under the First Amendment right to free
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`speech. The NAACP filed four counterclaims against Radiance and Bomberger, asserting it is
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`entitled to relief for trademark infringement and trademark dilution under the Lanham Act and
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`the Virginia Code. The NAACP claimed Plaintiffs' use of its federally registered trademarks
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`"NAACP" and "Image Awards" and as well as the unregistered "National Association for the
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`Advancement of Colored People" name and Scales of Justice Seal (referred to collectively as
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`"NAACP Marks") was unlawful.
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`The Court held a bench trial, which commenced on December 10, 2013. The parties have
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`filed post-trial briefs and this matter is now ripe for judicial determination. The Court issues the
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`following Findings of Fact and Conclusions of Law, as required by Rule 52(a) of the Federal
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`Rules of Civil Procedure. For the reasons set forth herein, Radiance and Bomberger's request
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`for declaratory judgment in their favor is DENIED. On the NAACP's counterclaims, the Court
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`FINDS that Plaintiffs are liable for trademark infringement and trademark dilution of the
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`"NAACP" and "National Association for the Advancement of Colored People" trademarks.
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`I. FACTUAL FINDINGS
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`A.
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`Factual and Procedural History
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`Radiance, a non-profit organization founded by Bomberger, educates the public about
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`social issues from a Christian perspective. Compl. KK 1, 8. The NAACP is a civil rights
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`organization that provides educational and outreach services to African Americans. Countercl.
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`KK 8-9. After NAACP executives publicly criticized Plaintiffs' anti-abortion billboards in 2010
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`and 2011, Bomberger wrote three news articles critiquing the NAACP's position on abortion,
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`employing the phrase "National Association for the Abortion of Colored People."1 Compl. KK
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`13-15. These articles were posted on Radiance's websites TooManyAborted.com and
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`TheRadianceFoundation.org as well as on a third party website LifeNcws.com. Compl. KK 14-
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`20. The first article, published June 21, 2011 on TooManyAborted.com, had a headline that read
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`"NAACP: National Association for the Abortion of Colored People" and discussed Defendant's
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`' Initially, California NAACP Chapter President Alice Huffman called Radiance's billboards "horribly racist." Trial
`Transcript 107:16-108:2 (hereinafter "Tr."). Then, in June of 2011, the Huffington Post published an article about
`Radiance's billboards in Georgia, quoting the NAACP's Washington Bureau Director and Senior Vice President for
`Advocacy and PolicyHilary Sheltonas criticizingthe campaign for comparingabortion to slavery. Tr. at 108:6-
`109:10.
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`endorsement of the 2004 March for Women's Lives. Compl. K15. The second article from July
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`6, 2011, published on LifeNews.com, included a graphic of the Scales of Justice Seal and stated
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`that National Association for the Abortion of Colored People would be a fitting moniker for the
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`NAACP. Compl. KK 19- 20. The third article, published on TheRadianceFoundation.org,
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`LifeNews.com and TooManyAborted.com in January of 2013, discussed the NAACP's Annual
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`Image Awards. Compl. KK 23-26.2 This article employed the phrase "National Association for
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`the Abortion of Colored People" throughout its text and headline. Id. Additionally, Bomberger
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`made a speech in December of 2012, during which he stated, "Groups such as the NAACP
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`(whichhas become The National Association for the Abortion of Colored People) and the
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`Congressional Black Caucus aid and abet this mass destruction of beautiful potential in the black
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`community," a statement that was later posted on TooManyAborted.com. Compl. K22.
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`The NAACP became aware of Radiance's use of its marks through a Google Alert that
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`identified the third article on LifeNews.com as a "hit" when a search for "NAACP" was
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`performed. On January 28,2013, the NAACP sent Plaintiffs a letter threatening to take legal
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`action if Radiance and Bomberger did not cease to use the NAACP Marks. Compl., Ex. 7. On
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`February 1, 2013, Radiance filed a Complaint for declaratory judgment, asserting that its use of
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`the NAACP Marks does not constitute infringement, tarnishment or dilution and is protected
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`speech under the First Amendment. On April 8, 2013, the NAACP filed counterclaims for
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`trademark infringement and federal unfair competition under the Lanham Act, trademark dilution
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`under the Trademark Dilution Revision Act, and Virginia common lawtrademark infringement
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`and unfair competition.
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`2This third article, first published in January 2013, is the article upon which the NAACP bases its counterclaims.
`See infra Part I, Section C, point 14.
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`On April 29,2013, Plaintiffs filed a motion for summaryjudgment simultaneously with
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`their Answer to the counterclaims, which this Court denied. Order, Oct. 15,2013, ECF No. 44.
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`On November 11, 2013, after the completion of discovery, the NAACP filed a motion for
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`summary judgment, which was also denied. Order, Dec. 6, 2013, ECF No. 70. This Court also
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`granted-in-part and denied-in-part the motion in limine filed by the NAACP on November 6,
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`2013, limiting the testimony of Plaintiffs' expert Tracy Tuten, Ph.D. to opinions regarding
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`general consumer survey principles and methodologies. Order, Dec. 11, 2013, ECF No. 76.
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`Lastly, this Court denied the NAACP's request for a directed verdict in its favor as to its
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`counterclaims. Order, Jan. 9, 2014, nunc pro tunc Dec. 12,2013, ECF No. 83. The bench trial
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`commenced on December 10,2013 and ended on December 12, 2013.
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`B.
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`Stipulated Facts
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`The parties have stipulated to the following facts, which the Court accepts and finds:
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`1. The NAACP is the nation's oldest and largest civil rights organization. It owns and
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`maintains the website at www.naacp.org. The principal stated objectives of the NAACP
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`are to ensure the political, educational, social, and economic equality of all citizens, and
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`to achieve quality of rights and eliminate racial prejudice among citizens of the United
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`States. The NAACP's leadership consists of prominent individuals in American society,
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`including lawyers, government officials, clergy, physicians, policymakers, and social
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`advocates.
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`2. The NAACP engages in and provides community outreach, informational, and
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`educational services activities on a range of issues of importance to the African American
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`community. With regard to health care issues, the NAACP has advocated for equal
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`access to quality health care for all Americans, including members of the African
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`American community.
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`3. The Black community is the focus of the NAACP's activities and programs.
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`4. The NAACP actively solicits contributions from, among others, members of the African
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`American community and other people of color to support its programs and outreach
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`activities.
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`5. The NAACP sponsors billboards for the purpose of promoting its campaigns and
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`outreach activities, which are focused on issues of pressing importance to members of the
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`Black community.
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`6. The NAACP mark (U.S. Trademark Registration No. 1,188,182) is a valid and subsisting
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`federally registered trademark. By virtue of this registration, the registered NAACP mark
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`is entitled to protection under the Lanham Act, 15 U.S.C. § 1051, et seq.
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`7. The marks NAACP and NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF
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`COLORED PEOPLE are owned and used by the NAACP, and are valid, protectable and
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`distinctive.
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`8. The NAACP and NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF
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`COLORED PEOPLE marks have achieved widespread recognition among the general
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`public of the United States.
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`9. The NAACP and NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF
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`COLORED PEOPLE are famous and strong marks.
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`10. The NAACP and NATIONAL ASSOCIATION FOR THE ADVANCMENT OF
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`COLORED PEOPLE marks were famous before Plaintiffs' first use of them.
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`11. Ryan Bomberger is a writer and media creator who, with his wife, Bethany Bomberger,
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`formed The Radiance Foundation in 2009.
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`12. Radiance is a non-profit corporation (501(c)(3)) dedicated to educating people about
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`social issues from its Christian perspective.
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`13. Among other things, Radiance provides informational, educational and community
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`outreach services related to race relations, diversity, adoption, fatherlessness, pop culture,
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`pluralism and the impactof abortion on the Black community.
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`14. Radiance owns and maintains the website at the URL www.theradiancefoundation.org
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`(the "Radiance Site").
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`15. Radiance launched its "TooManyAborted.com" campaign in 2010 for Black History
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`Month to help publicize the impact of abortion in the Black community.
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`16. In conjunction with this campaign, Radiance created, and continues to own and maintain
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`the website at the URL www.toomanyaborted.com (the "TooManyAborted Site").
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`17. Radiance provides community outreach services to organizations and individuals,
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`including outreach on education, character development, social issues, and racism against
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`the Black community. Through its "Shine" communityoutreach activity, Radiance takes
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`on various social issues, including poverty, educational choice, and civil rights.
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`18. The stated mission of Radiance's "TooManyAborted.com" campaign is to educate the
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`public about abortion's impact on the African American community.
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`19. Radiance purchases billboard space for the purpose of promoting and publicizing its
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`campaigns and outreach activities.
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`20. Radiance has provided t-shirts and onesies (i.e. a babies' garments) and novelty items
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`such as stuffed animals, pins, buttons, and stickers to individuals who have donated
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`money to Radiance.
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`21. "National Association for the Abortion of Colored People" closely resembles "National
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`Association for the Advancement of Colored People."
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`22. Bomberger used the term "National Association for the Abortion of Colored People" in
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`orderto convey to people that the actual NAACP is pro-abortion.
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`C.
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`Additional Factual Findings
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`The Court has made the following additional factual findings:
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`1. The NAACP has no formal or official position or policy regarding abortion because such
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`a position may create problems within its diverse membership and constituency, who
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`embrace a wide range of views on the controversial issue of abortion. The NAACP
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`generally supports full and equal access for all persons to all legally available forms of
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`healthcare.5
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`2. The"NAACP" trademark represents "[association services, namely, providing legal
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`assistance, technical assistance and other resources to achieve civil rights in education,
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`voting, housing, employment and economic opportunity."6 "NAACP" is an acronym of
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`the name of Defendant's organization, the National Association for the Advancement of
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`Colored People.
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`3. The "National Association for the Advancement of Colored People" trademark is the
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`name of Defendant's organization. The NAACP has extensively used "National
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`3The aforementioned Stipulated Facts represent the Undisputed Facts outlined inthe Final Pretrial Order in this
`case. ECF No. 59.
`4 Tr. at 243:4-25.
`5 Tr. at 244:25-245:13.
`6Countercl. f 11.
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`Association for the Advancement of Colored People" in interstate commerce since its
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`founding in 1909 to identify itsorganization and services.
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`4. The Scales of Justice Seal trademark represents theNAACP. The NAACP has
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`extensively used the Scales ofJustice Seal in interstate commerce since its founding in
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`1909 to identify its organization and services. The graphic ofthe Scales ofJustice Seal
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`includes "NAACP," "National Association for the Advancement ofColored People" and
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`the founding year of the organization.
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`5. The "Image Awards" trademark was federally registered on November 15, 2005. "Image
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`Awards" represents services such as "organizing and conducting the presentation of
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`awards recognizing exemplary works, people orprojects that promote a positive
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`impression ofpeople ofcolor; educational and entertainment services in the nature ofa
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`live show and broadcast ofthe presentation ofawards."9 The NAACP held its 44th
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`Annual Image Awards broadcast in 2013.
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`6. The NAACP has used the NAACP Marks in all available media, including telephone,
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`telegraph, faxes, magazines, newspapers, television and the Internet.
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`7. Radiance advocates its viewpoints on a number of social issues by preparing and
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`distributing media in a variety offorms, including short video messages, printed graphics
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`and news articles published on the Internet. Bomberger also makes personal appearances
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`at events and provides interviews for the media.
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`7Countercl. U12.
`8Countercl. \ 12.
`9Countercl. i 11.
`10 Radiance Ex. 2045.
`11 Tr. at 220:14-23.
`12 Tr. at 49:20-51:11.
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`8. Radiance has never owned or operated awebsite with any of the NAACP Marks or
`"National Association for the Abortion ofColored People" in the domain name.13
`9. Neither Radiance nor Bomberger own, maintain or operate the LifeNews.com website.
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`LifeNews.com is operated by a third party.
`10. In January 2013, Bomberger wrote an article regarding the NAACP's Annual Image
`Awards, bearing the headline "NAACP: National Association for the Abortion of
`Colored People" (hereinafter "January 2013 Article"). This article was first posted on the
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`Radiance Site. This article also appeared on LifeNews.com. Radiance later posted the
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`article athird time on the TooManyAborted Site under the title "National Association for
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`the Abortion ofColored People."15
`11. On the Radiance Site, the headline for the January 2013 Article appears in text and in a
`graphic. The graphic headline included the phrase "NAACP: National Association for
`the Abortion ofColored People" adjacent to an image ofaTooManyAborted billboard
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`with the text "Black &Beautiful" and a photograph ofan African American baby.
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`12. On LifeNews.com, the Scales ofJustice Seal was prominently displayed on the webpage
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`next to the text ofthe January 2013 Article.17 The webpage also contained alink to the
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`TooManyAborted Site.18 Bomberger gave LifeNews.com permission to reprint the
`article and was aware that the Scales ofJustice Seal was displayed next to the text.19
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`13 Tr. 58:2-20.
`14 Tr. 189:2-4; 190:11-20.
`15 Radiance Ex. 2127; Tr. 122:4-11.
`16 Radiance Ex. 2045; Tr. 77:4-12.
`17 Radiance Ex. 2223.
`18 Tr. at 132:15-19.
`19 Tr. at 51:15-25; 200:1-14.
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`13. On the TooManyAborted Site, the January 2013 Article appeared with agraphic headline
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`that included the words "Civil Wrong" in large letters. Underneath the large letters is
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`"The National Association for the Abortion of ColoredPeople."
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`14. On January 17,2013, the NAACP learned ofthe existence of the January 2013 Article
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`through an alert generated by the Google Internet search engine for the "NAACP"
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`trademark. The Google Alert presented a hyperlink to the January 2013 Article on
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`LifeNews.com.21 The hyperlink to the article appeared as the second "hit" in the Google
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`Alert results outof a total of 18 hits.22
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`15. On January 28,2013, the NAACP, through counsel, sent a cease and desist letter to
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`Radiance stating that Radiance's use ofthe NAACP Marks and "National Association for
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`the Abortion of Colored People" constituted a violation of the NAACP's trademark
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`rights. The letter demanded that Radiance cease such uses.
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`16. On January 28,2013, Bomberger sent an e-mail to Joseph A. Brinck seeking to raise
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`money to fund a public relations effort to generate publicity for Radiance and its dispute
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`with the NAACP.24
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`17. Members ofthe public who viewed the January 2013 Article called the NAACP to
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`express concern about the "National Association for the Abortion ofColored People"
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`moniker.25
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`18. The NAACP engaged Henry D. Ostberg, Ph.D., an expert in marketing, consumer
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`surveys and marketing communications, to conduct a survey to determine consumer
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`perception ofthe name "National Association for the Abortion ofColored People" as
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`20 Radiance Ex. 2127.
`21 NAACP Ex. 1030.
`22 Id.
`23 Radiance Ex. 2225
`24 NAACP Ex. 1021.
`25 Tr. at 262:22-263:1; 269:11-23.
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`10
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`used in the context ofthe challenged Bomberger article, including whether members of
`the public interpreted the name as aparody or sarcastic criticism ofthe NAACP, or
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`whether it instead was viewed as a real name orreal organization thereby creating a
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`likelihood of confusion or dilution of one or more of the NAACP Marks.
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`19. The Radiance Site presents its visitors with an opportunity to donate to Radiance. An
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`orange box containing the word "Donate" appeared on Radiance Site webpages, through
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`which Radiance solicits and receives donations of money for its organization.
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`27
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`20. The TooManyAborted Site presents its visitors with the opportunity to donate to
`Radiance or sponsor outdoor billboards with anti-abortion messaging.28 For additional
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`fees, the TooManyAborted Site offers other services related to billboards, such as
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`licensing ofartwork, research, content creation, and the opportunity to finance placement
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`of astate-specific anti-abortion webpage.29 Visitors can initiate afinancial transaction
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`with Radiance through the TooManyAborted Site by submitting their contact
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`information.30 Radiance then contacts the interested party to confirm the details and
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`sends a license agreement specifying the services to be rendered along with payment and
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`. . .
`invoicing terms.
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`31
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`21. Radiance has erected billboards in seven states, along with seven state-specific anti-
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`abortion webpages. Seven different messages have appeared on billboards. The
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`billboards also include a reference to the TooManyAborted Site as well as a sponsorship
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`26 NAACP Ex. 1045.
`27 Radiance Ex. 2045.
`28 Radiance Ex. 2131.
`29 Id
`30 Tr. at 147:1-148:8.
`31 Tr. at 149:9-150:13; NAACP Ex. 1015.
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`11
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`tagline identifying Radiance and any sponsoring organization.32 The seven state-specific
`webpages appear under the "The Impact" section ofthe TooManyAborted Site.33
`22. None ofRadiance's billboard artwork has displayed any ofthe NAACP Marks orhas
`included the phrase "National Association for the Abortion ofColored People."34 None
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`ofthe NAACP Marks or "National Association for the Abortion ofColored People" has
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`appeared on any webpage accessed via the "Take Action" menu item, including the
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`"Expose the Lies. Sponsor a Billboard" page.
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`II. CONCLUSIONS OF LAW
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`1. This Court has subject matter jurisdiction in this matter under 28 U.S.C. § 1338(a) to hear
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`claims arising out offederal trademark laws. This Court also has jurisdiction under 28
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`U.S.C. §1332 because there is citizenship diversity between the parties and the matter in
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`controversy exceeds $75,000.
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`2. This Court has personal jurisdiction over Plaintiffs because Radiance's principal place of
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`business is in Virginia and Bomberger is domiciled in Virginia. This Court has personal
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`jurisdiction over Defendant because the NAACP conducts activities and derives revenue
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`in Virginia, and has a substantial number ofchapters and members throughout the
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`Commonwealth.
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`3. Venue is proper under § 1391 in any judicial district in which the defendant is properly
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`subject to personal jurisdiction. 28 U.S.C. § 1391(b) and (c). Venue is proper pursuant
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`to § 1391 because asubstantial part ofthe acts giving rise to the claims occurred in this
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`District, and Defendant has sufficient connection with the Eastern District of Virginia.
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`32 Tr. 84:9-86:13; 150:20-151:2.
`33 Tr. 85:11-24.
`34 Tr. 107:10-12.
`35 Tr. 100:16-101:5.
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`12
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`Trademark Infringement
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`4. Pursuant to Section 32(1)(a) the Lanham Act, "[a]ny person who shall, without the
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`consent ofthe registrant —use in commerce any reproduction, counterfeit, copy, or
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`colorable imitation ofa registered mark in connection with the sale, offering for sale,
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`distribution, or advertising ofany goods or services on or in connection with which such
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`use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a
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`civil action by the registrant
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`" 15 U.S.C. § 1114.
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`5. Pursuant to Section 43(a) the Lanham Act, "[a]ny person who, on or in connection with
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`any goods or services, or any container for goods, uses in commerce any word, term,
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`name, symbol, or device, or any combination thereof, or any false designation oforigin,
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`false or misleading description offact, or false or misleading representation offact,
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`which —is likely to cause confusion, or to cause mistake, or to deceive as to the
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`affiliation, connection, orassociation ofsuch person with another person, oras to the
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`origin, sponsorship, or approval ofhis or her goods, services, or commercial activities by
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`another person ... shall be liable in a civil action by any person who believes that he or
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`she is or is likely to bedamaged by such act." 15 U.S.C. § 1125(a)(1).
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`6. The party making the allegations ofinfringement has the burden ofproof to present
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`evidence in support ofthe allegations set forth inits complaint and to prove those
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`allegations by a preponderance ofthe evidence. Tie Tech, Inc. v. Kinedyne Corp., 296
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`F.3d 778,783 (9th Cir. 2002); Eurotech, Inc. v. Cosmos European Travels
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`Aktiengesellschqft, 213 F. Supp. 2d 612, 623 (E.D. Va. 2002).
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`7. To establish aninfringement violation ofthe Lanham Act for either a registered mark
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`under 15 U.S.C. § 1114 oran unregistered mark under 15 U.S.C. § 1125(a), "a plaintiff
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`must prove: (1) that it owns avalid mark; (2) that the defendant used the mark 'in
`commerce' and without the plaintiffs authorization; (3) that the defendant used the mark
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`(or an imitation of it) 'in connection with the sale, offering for sale, distribution, or
`advertising' of goods or services; and (4) that the defendant's use of the mark is likely to
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`confuse consumers." Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir.
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`2012) (quoting 15 U.S.C. § 1114(a)).
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`8. To establish trademark infringement liability under Virginia law, a plaintiff must prove
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`that a defendant "uses in a manner likely to cause a consumer confusion, mistake, or
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`deception as to the source or origin of any goods or services, without the consent ofthe
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`owner ofaregistered mark, any reproduction, counterfeit, copy, or colorable imitation of
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`aregistered mark in connection with the sale, offering for sale, distribution, or advertising
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`ofsuch goods or services." Va. Code Ann. §59.1-92.12(0 (West 2011).
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`9. For a trademark to beused "in connection with the sale, offering for sale, distribution, or
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`advertising ofgoods or services," the alleged infringer must offer goods or services in
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`commerce under the trademark without the consent of the mark holder. OBH, Inc. v.
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`Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 186 (W.D.N.Y. 2000).
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`10. "Services" are defined as "a wide variety of non-commercial public and civic benefits,"
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`including donation solicitation, event hosting, information dissemination and
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`campaigning. Lamparello v. Falwell, 420 F.3d 309, 314 (4th Cir. 2005).
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`11. The NAACP has established by a preponderance of the evidence that Radiance used the
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`NAACP Marks in connection with the offering for sale of servicesbecause the marks
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`appeared in connection with the NAACP's information services as well as Radiance's
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`fundraising, sponsorship and outreach efforts.
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`12. Likelihood ofconfusion involves potential consumers being confused about the source of
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`services as well as their sponsorship. Rosetta Stone Ltd., 676 F.3d at 157. Likelihood of
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`confusion exists if the consuming public assumes upon viewing a mark that the service
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`offered under the mark is associated with a different service represented by a similar
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`mark. Harlem Wizards Entm 't Basketball, Inc. v. NBA Props., Inc., 952F. Supp. 1084,
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`1094 (D.N.J. 1997).
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`13. The Fourth Circuit "has articulated at least nine factors that generally are relevant to the
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`'likelihood ofconfusion' inquiry: (1) the strength ordistinctiveness ofthe plaintiffs
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`mark as actually used in the marketplace; (2) the similarity ofthe two marks to
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`consumers; (3) the similarity ofthe goods or services that the marks identify; (4) the
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`similarity ofthe facilities used by the markholders; (5) the similarity ofadvertising used
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`by the markholders; (6) the defendant's intent; (7) actual confusion; (8) the quality ofthe
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`defendant's product; and (9) the sophistication ofthe consuming public." George &Co.,
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`LLC v. Imagination Entm 7Ltd., 575 F.3d 383,393 (4th Cir. 2009).
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`14. Parody is not an affirmative defense to trademark infringement "but only another factor
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`to beconsidered indetermining the likelihood ofconfusion
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`The keystone ofparody
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`is imitation, but must convey two simultaneous—and contradictory—messages: 'that it is
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`the original, but also that itis not the original and is instead a parody.'" World Wrestling
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`Fed'n Entm 7Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d413, 431 (W.D. Pa. 2003)
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`(quoting Nike, Inc. v. Just Did It Enters., 6 F.3d 1225, 1228 (7th Cir. 1993)).
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`15. First Amendment concerns regarding freedom of speech and expression must bebalanced
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`against trademark rights and remedies, and an alleged infringer's use ofa mark as part of
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`a communicative message is entitled to First Amendment protection so long as it does not
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`15
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`Case 2:13-cv-00053-RAJ-DEM Document 89 Filed 04/24/14 Page 16 of 52 PageID# 3026
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`mislead orcreate confusion. Westchester Media v. PRL USA Holdings, Inc., 214 F.3d
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`658, 672 (5th Cir. 2000).
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`16. The NAACP has demonstrated by a preponderance of the evidence that consumers are
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`likely to be confused about whether "National Association for the Abortion of Colored
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`People" is sponsored, authorized by or otherwise affiliated with the NAACP, and there is
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`ahigh likelihood of confusion involving Radiance's use of"NAACP" and acolorable
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`imitation of "National Association for theAdvancement of Colored People." The
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`NAACP has not established that the relevant confusion factors are indicative of any
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`likelihood that consumers would beconfused about the origin or sponsorship of any
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`services offered under Radiance's use of"Image Awards" and the Scales of Justice Seal.
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`Trademark Dilution
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`17. Pursuant to Section 43(c)(1) ofthe Lanham Act, "the owner ofa famous mark that is
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`distinctive, inherently orthrough acquired distinctiveness, shall be entitled to an
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`injunction against another person who, at any time after the owner's mark has become
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`famous, commences use of a mark ortrade name in commerce that is likely to cause
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`dilution by blurring or dilution by tamishment ofthe famous mark, regardless ofthe
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`presence or absence ofactual or likely confusion, ofcompetition, or ofactual economic
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`injury." 15 U.S.C. § 1125(c)(1).
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`18. Dilution by tamishment denotes an "association arising from the similarity between a
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`mark or a trade name and a famous mark that harms the reputation of the famous mark."
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`15 U.S.C. § 1125(c). A trademark may be tarnished when it is "portrayed in an
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`unwholesome or unsavory context," resulting in "the public [...] associating] the lack of
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`16
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`

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`Case 2:13-cv-00053-RAJ-DEM Document 89 Filed 04/24/14 Page 17 of 52 PageID# 3027
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`quality or lack ofprestige in the defendant's goods with the plaintiffs unrelated goods."
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`Deere &Co. v. MTD Prods., 41 F.3d 39,43 (2d Cir. 1994).
`19. "To state aprima facie dilution claim ... the plaintiffmust show the following: (1) that
`the plaintiffowns afamous mark that is distinctive; (2) that the defendant has
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`commenced using amark in commerce that allegedly is diluting the famous mark; (3)
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`that asimilarity between the defendant's mark and the famous mark gives rise to an
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`association between the marks; and (4) that the association is likely to impair the
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`distinctiveness ofthe famous mark or likely to harm the reputation ofthe famous mark."
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`Rosetta Stone Ltd., 676 F.3d at 168 (citing Louis Vuitton Malletier S.A. v. Haute Diggity
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`Dog, LLC, 507 F.3d 252, 264-65 (4th Cir. 2007)).
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`20. The fair use defense to trademark dilution allows description and criticism that
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`incidentally involves the use ofatrademark. 15 U.S.C. § 1125(c)(3)(A). Fair use may
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`take the form of a nominative use or a parody.
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`21. A nominative use occurs when a defendant uses a plaintiffs mark to identify the
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`plaintiffs own goods and "makes itclear to consumers that the plaintiff, not the
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`defendant, isthe source ofthe trademarked product or service." Century 21 Real Estate
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`Corp. v. Lendingtree, Inc., 425 F.3d 211,220 (3d Cir. 2005).
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`22. An unauthorized use of a trademark for news reporting and news commentary as well as
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`noncommercial use are exempt from liability for dilution bytamishment. 15 U.S.C.
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`§ 1125(c)(3).
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`23. TheNAACP has established by a preponderance of the evidence thatRadiance has
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`engaged in conduct that constitutes dilution by tamishment because Radiance's use of
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`"National Association for the Abortion of Colored People" is likely to harm the
`
`17
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`Case 2:13-cv-00053-RAJ-DEM Document 89 Filed 04/24/14 Page 18 of 52 PageID# 3028
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`reputation ofthe "NAACP" and "National Association for the Advancement ofColored
`People" marks as it insinuates astance ofabortion that the NAACP has deliberately
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`avoided. Radiance has demonstrated by a preponderance ofthe evidence that itengaged
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`in a nominative use of"Image Awards" and the Scales ofJustice Seal, which did not
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`result in dilution by tamishment.
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`Consumer Survey Evidence
`24. "A party introducing aconsumer survey bears the burden of establishing that it was
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`conducted inaccordance with accepted principles of survey research, i.e., that (1) a
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`proper universe was examined; (2) arepresentative sample was drawn from that universe;
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`(3) the mode of questioning the interviewees was correct; (4) the persons conducting the
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`survey were recognized experts; (5) the data gathered was accurately reported; and (6)
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`the sample design, the questionnaire and the interviewing were in accordance with
`generally accepted standards ofprocedure and statistics." Harlem Wizards, 952 F. Supp.
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`at 1098.
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`25. Although Radiance expert Dr. Tracy Tuten opined that Dr. Ostberg's survey ("Ostberg
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`Survey") suffers from reliability and validity issues such as improper sampling and lack
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`ofcontrols, the Court finds that the NAACP has demonstrated by a preponderance ofthe
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`evidence that the Ostberg Survey is reliable.
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`Remedies
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`26. Aparty seeking an injunction must demonstrate "(1) ithas suffered an irreparable injury;
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`(2) remedies available at law are inadequate; (3) the balance ofthe hardships favors the
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`36 Specifically, Dr. Tuten testified as to two main critiques ofthe Ostberg Survey. First, Dr. Tuten argues Dr.
`Ostberg's sampling frame was im