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The Radiance Found., Inc. v. National Association for the Advancement of Colored People

United States District Court, E.D. Virginia, Norfolk Division

April 24, 2014

THE RADIANCE FOUNDATION, INC. et al., Plaintiffs,
v.
NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE, Defendant

As Amended June 10, 2014.

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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For The Radiance Foundation, Inc., Ryan Bomberger, Plaintiffs: Charles Manley Allen, Jr., LEAD ATTORNEY, Goodman Allen & Filetti PLLC, Glen Allen, VA; William Francis Demarest, III, Goodman Allen & Filetti PLLC (Glen Allen), Glen Allen, VA.

For National Association for the Advancement of Colored People, Defendant: David Glenn Barger, LEAD ATTORNEY, Greenberg Traurig LLP, McLean, VA; Johnine Barnes, Steven John Wadyka, Jr, PRO HAC VICE, Greenberg Traurig LLP (DC-NA), Washington, DC.

For National Association for the Advancement of Colored People, Counter Claimant: David Glenn Barger, LEAD ATTORNEY, Greenberg Traurig LLP, McLean, VA; Johnine Barnes, Steven John Wadyka, Jr, PRO HAC VICE, Greenberg Traurig LLP (DC-NA), Washington, DC.

For Ryan Bomberger, The Radiance Foundation, Inc., Counter Defendants: Charles Manley Allen, Jr., LEAD ATTORNEY, Goodman Allen & Filetti PLLC, Glen Allen, VA; William Francis Demarest, III, Goodman Allen & Filetti PLLC (Glen Allen), Glen Allen, VA.

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AMENDED MEMORANDUM OPINION AND ORDER

Raymond A. Jackson, United States District Judge.

This Memorandum Opinion and Order is issued after a bench trial in the above-styled matter to resolve trademark infringement and trademark dilution claims.

On February 1, 2013, the Radiance Foundation, Inc. (" Radiance" ) and Ryan Bomberger (" Bomberger" ) brought this action for declaratory judgment against the National Association for the Advancement of Colored People (" Defendant" or " NAACP" ). Radiance and Bomberger (together referred to as " Plaintiffs" ) moved this Court to enter judgment declaring that their use of certain marks allegedly owned by the NAACP was not infringing, tarnishing or diluting in violation of common law or the Lanham Act. Radiance and Bomberger also requested that the Court declare their use of these trademarks protected under the First Amendment right to free speech. The NAACP filed four counterclaims against Radiance and Bomberger, asserting it is entitled to relief for trademark infringement and trademark dilution under the Lanham Act and the Virginia Code. The NAACP claimed Plaintiffs' use of its federally registered trademarks " NAACP" and " Image Awards" and as well as the unregistered " National Association for the Advancement of Colored People" name and Scales of Justice Seal (referred to collectively as " NAACP Marks" ) was unlawful.

The Court held a bench trial, which commenced on December 10, 2013. The parties have filed post-trial briefs and this matter is now ripe for judicial determination. The Court issues the following Findings of Fact and Conclusions of Law, as required by Rule 52(a) of the Federal Rules of Civil Procedure. For the reasons set forth herein, Radiance and Bomberger's request for declaratory judgment in their favor is DENIED. On the NAACP's counterclaims, the Court FINDS that Plaintiffs are liable for trademark infringement and trademark dilution of the " NAACP" and " National Association for

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the Advancement of Colored People" trademarks.

I. FACTUAL FINDINGS

A. Factual and Procedural History

Radiance, a non-profit organization founded by Bomberger, educates the public about social issues from a Christian perspective. Compl. ¶ ¶ 1, 8. The NAACP is a civil rights organization that provides educational and outreach services to African Americans. Countercl. ¶ ¶ 8-9. After NAACP executives publicly criticized Plaintiffs' anti-abortion billboards in 2010 and 2011, Bomberger wrote three news articles critiquing the NAACP's position on abortion, employing the phrase " National Association for the Abortion of Colored People." [1] Compl. ¶ ¶ 13-15. These articles were posted on Radiance's websites TooManyAborted.com and TheRadianceFoundation.org as well as on a third party website LifeNews.com. Compl. ¶ ¶ 14-20. The first article, published June 21, 2011 on TooManyAborted.com, had a headline that read " NAACP: National Association for the Abortion of Colored People" and discussed Defendant's endorsement of the 2004 March for Women's Lives. Compl. ¶ 15. The second article from July 6, 2011, published on LifeNews.com, included a graphic of the Scales of Justice Seal and stated that National Association for the Abortion of Colored People would be a fitting moniker for the NAACP. Compl. ¶ ¶ 19- 20. The third article, published on TheRadianceFoundation.org, LifeNews.com and TooManyAborted.com in January of 2013, discussed the NAACP's Annual Image Awards. Compl. ¶ ¶ 23-26.[2] This article employed the phrase " National Association for the Abortion of Colored People" throughout its text and headline. Id. Additionally, Bomberger made a speech in December of 2012, during which he stated, " Groups such as the NAACP (which has become The National Association for the Abortion of Colored People) and the Congressional Black Caucus aid and abet this mass destruction of beautiful potential in the black community," a statement that was later posted on TooManyAborted.com. Compl. ¶ 22.

The NAACP became aware of Radiance's use of its marks through a Google Alert that identified the third article on LifeNews.com as a " hit" when a search for " NAACP" was performed. On January 28, 2013, the NAACP sent Plaintiffs a letter threatening to take legal action if Radiance and Bomberger did not cease to use the NAACP Marks. Compl., Ex. 7. On February 1, 2013, Radiance filed a Complaint for declaratory judgment, asserting that its use of the NAACP Marks does not constitute infringement, tarnishment or dilution and is protected speech under the First Amendment. On April 8, 2013, the NAACP filed counterclaims for trademark infringement and federal unfair competition under the Lanham Act, trademark dilution under the Trademark Dilution Revision Act, and Virginia common law trademark infringement and unfair competition.

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On April 29, 2013, Plaintiffs filed a motion for summary judgment simultaneously with their Answer to the counterclaims, which this Court denied. Order, Oct. 15, 2013, ECF No. 44. On November 11, 2013, after the completion of discovery, the NAACP filed a motion for summary judgment, which was also denied. Order, Dec. 6, 2013, ECF No. 70. This Court also granted-in-part and denied-in-part the motion in limine filed by the NAACP on November 6, 2013, limiting the testimony of Plaintiffs' expert Tracy Tuten, Ph.D. to opinions regarding general consumer survey principles and methodologies. Order, Dec. 11, 2013, ECF No. 76. Lastly, this Court denied the NAACP's request for a directed verdict in its favor as to its counterclaims. Order, Jan. 9, 2014, nunc pro tunc Dec. 12, 2013, ECF No. 83. The bench trial commenced on December 10, 2013 and ended on December 12, 2013.

B. Stipulated Facts

The parties have stipulated to the following facts, which the Court accepts and finds:

1. The NAACP is the nation's oldest and largest civil rights organization. It owns and maintains the website at www.naacp.org. The principal stated objectives of the NAACP are to ensure the political, educational, social, and economic equality of all citizens, and to achieve quality of rights and eliminate racial prejudice among citizens of the United States. The NAACP's leadership consists of prominent individuals in American society, including lawyers, government officials, clergy, physicians, policymakers, and social advocates.
2. The NAACP engages in and provides community outreach, informational, and educational services activities on a range of issues of importance to the African American community. With regard to health care issues, the NAACP has advocated for equal access to quality health care for all Americans, including members of the African American community.
3. The Black community is the focus of the NAACP's activities and programs.
4. The NAACP actively solicits contributions from, among others, members of the African American community and other people of color to support its programs and outreach activities.
5. The NAACP sponsors billboards for the purpose of promoting its campaigns and outreach activities, which are focused on issues of pressing importance to members of the Black community.
6. The NAACP mark (U.S. Trademark Registration No. 1,188,182) is a valid and subsisting federally registered trademark. By virtue of this registration, the registered NAACP mark is entitled to protection under the Lanham Act, 15 U.S.C. § 1051, et seq.
7. The marks NAACP and NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE are owned and used by the NAACP, and are valid, protectable and distinctive.
8. The NAACP and NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE marks have achieved widespread recognition among the general public of the United States.
9. The NAACP and NATIONAL ASSOCIATION FOR THE ADVANCEMENT

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OF COLORED PEOPLE are famous and strong marks.
10. The NAACP and NATIONAL ASSOCIATION FOR THE ADVANCMENT OF COLORED PEOPLE marks were famous before Plaintiffs' first use of them.
11. Ryan Bomberger is a writer and media creator who, with his wife, Bethany Bomberger, formed The Radiance Foundation in 2009.
12. Radiance is a non-profit corporation (501(c)(3)) dedicated to educating people about social issues from its Christian perspective.
13. Among other things, Radiance provides informational, educational and community outreach services related to race relations, diversity, adoption, fatherlessness, pop culture, pluralism and the impact of abortion on the Black community.
14. Radiance owns and maintains the website at the URL www.theradiancefoundation.org (the " Radiance Site" ).
15. Radiance launched its " TooManyAborted.com" campaign in 2010 for Black History Month to help publicize the impact of abortion in the Black community.
16. In conjunction with this campaign, Radiance created, and continues to own and maintain the website at the URL www.toomanyaborted.com (the " TooManyAborted Site" ).
17. Radiance provides community outreach services to organizations and individuals, including outreach on education, character development, social issues, and racism against the Black community. Through its " Shine" community outreach activity, Radiance takes on various social issues, including poverty, educational choice, and civil rights.
18. The stated mission of Radiance's " TooManyAborted.com" campaign is to educate the public about abortion's impact on the African American community.
19. Radiance purchases billboard space for the purpose of promoting and publicizing its campaigns and outreach activities.
20. Radiance has provided t-shirts and onesies (i.e. a babies' garments) and novelty items such as stuffed animals, pins, buttons, and stickers to individuals who have donated money to Radiance.
21. " National Association for the Abortion of Colored People" closely resembles " National Association for the Advancement of Colored People."
22. Bomberger used the term " National Association for the Abortion of Colored People" in order to convey to people that the actual NAACP is pro-abortion.[3]

C. Additional Factual Findings

The Court has made the following additional factual findings:

1. The NAACP has no formal or official position or policy regarding abortion because such a position may create problems within its diverse membership and constituency, who embrace a wide range of views on the controversial issue of

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abortion.[4] The NAACP generally supports full and equal access for all persons to all legally available forms of healthcare.[5]
2. The " NAACP" trademark represents " [a]ssociation services, namely, providing legal assistance, technical assistance and other resources to achieve civil rights in education, voting, housing, employment and economic opportunity." [6] " NAACP" is an acronym of the name of Defendant's organization, the National Association for the Advancement of Colored People.
3. The " National Association for the Advancement of Colored People" trademark is the name of Defendant's organization. The NAACP has extensively used " National Association for the Advancement of Colored People" in interstate commerce since its founding in 1909 to identify its organization and services.[7]
4. The Scales of Justice Seal trademark represents the NAACP. The NAACP has extensively used the Scales of Justice Seal in interstate commerce since its founding in 1909 to identify its organization and services. The graphic of the Scales of Justice Seal includes " NAACP," " National Association for the Advancement of Colored People" and the founding year of the organization.[8]
5. The " Image Awards" trademark was federally registered on November 15, 2005. " Image Awards" represents services such as " organizing and conducting the presentation of awards recognizing exemplary works, people or projects that promote a positive impression of people of color; educational and entertainment services in the nature of a live show and broadcast of the presentation of awards." [9] The NAACP held its 44th Annual Image Awards broadcast in 2013.[10]
6. The NAACP has used the NAACP Marks in all available media, including telephone, telegraph, faxes, magazines, newspapers, television and the Internet.[11]
7. Radiance advocates its viewpoints on a number of social issues by preparing and distributing media in a variety of forms, including short video messages, printed graphics and news articles published on the Internet. Bomberger also makes personal appearances at events and provides interviews for the media.[12]
8. Radiance has never owned or operated a website with any of the NAACP Marks or " National Association for the Abortion of Colored People" in the domain name.[13]
9. Neither Radiance nor Bomberger own, maintain or operate the LifeNews.com

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website. LifeNews.com is operated by a third party.[14]
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 Radiance Site. This article also appeared on LifeNews.com. Radiance later posted the article a third time on the TooManyAborted Site under the title " National Association for the Abortion of Colored 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 of Colored People" adjacent to an image of a TooManyAborted billboard with the text " Black & Beautiful" and a photograph of an African American baby.[16]
12. On LifeNews.com, the Scales of Justice Seal was prominently displayed on the webpage next to the text of the January 2013 Article.[17] The webpage also contained a link to the TooManyAborted Site.[18] Bomberger gave LifeNews.com permission to reprint the article and was aware that the Scales of Justice Seal was displayed next to the text.[19]
13. On the TooManyAborted Site, the January 2013 Article appeared with a graphic headline that included the words " Civil Wrong" in large letters. Underneath the large letters is " The National Association for the Abortion of Colored People." [20]
14. Bomberger authorized and approved the uses of the NAACP Marks and name " National Association for the Abortion of Colored People" in the headings, text and graphical images displayed on the webpages in the Radiance Site and the TooManyAborted Site.[21]
15. On January 17, 2013, the NAACP learned of the existence of the January 2013 Article through an alert generated by the Google Internet search engine for the " NAACP" trademark. The Google Alert presented a hyperlink to the January 2013 Article on LifeNews.com.[22] The hyperlink to the article appeared as the second " hit" in the Google Alert results out of a total of 18 hits.[23]
16. On January 28, 2013, the NAACP, through counsel, sent a cease and desist letter to Radiance stating that Radiance's use of the NAACP Marks and " National Association for the Abortion of Colored People" constituted a violation of the NAACP's trademark rights. The

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letter demanded that Radiance cease such uses.[24]
17. On January 28, 2013, Bomberger sent an e-mail to Joseph A. Brinck seeking to raise money to fund a public relations effort to generate publicity for Radiance and its dispute with the NAACP.[25]
18. Members of the public who viewed the January 2013 Article called the NAACP to express concern about the " National Association for the Abortion of Colored People" moniker.[26]
19. The NAACP engaged Henry D. Ostberg, Ph.D., an expert in marketing, consumer surveys and marketing communications, to conduct a survey to determine consumer perception of the name " National Association for the Abortion of Colored People" as used in the context of the challenged Bomberger article, including whether members of the public interpreted the name as a parody or sarcastic criticism of the NAACP, or whether it instead was viewed as a real name or real organization thereby creating a likelihood of confusion or dilution of one or more of the NAACP Marks.[27]
20. The Radiance Site presents its visitors with an opportunity to donate to Radiance. An orange box containing the word " Donate" appeared on Radiance Site webpages, through which Radiance solicits and receives donations of money for its organization.[28]
21. The TooManyAborted Site presents its visitors with the opportunity to donate to Radiance or sponsor outdoor billboards with anti-abortion messaging.[29] For additional fees, the TooManyAborted Site offers other services related to billboards, such as licensing of artwork, research, content creation, and the opportunity to finance placement of a state-specific anti-abortion webpage.[30] Visitors can initiate a financial transaction with Radiance through the TooManyAborted Site by submitting their contact information.[31] Radiance then contacts the interested party to confirm the details and sends a license agreement specifying the services to be rendered along with payment and invoicing terms.[32]
22. Radiance has erected billboards in seven states, along with seven state-specific anti-abortion webpages. Seven different messages have appeared on billboards. The billboards also include a reference to the TooManyAborted Site as well as a sponsorship tagline identifying Radiance and any sponsoring organization.[33] The seven ...

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