                              PUBLISHED

                  UNITED STATES COURT OF APPEALS
                      FOR THE FOURTH CIRCUIT


                             No. 14-1568


THE RADIANCE FOUNDATION, INC.; RYAN BOMBERGER,

                Plaintiffs - Appellants,

           v.

NATIONAL ASSOCIATION FOR THE ADVANCEMENT OF COLORED PEOPLE,

                Defendant - Appellee.

-----------------------------------

ELECTRONIC FRONTIER FOUNDATION; AMERICAN CIVIL LIBERTIES UNION
OF VIRGINIA; NATIONAL BLACK PRO-LIFE COALITION; WALTER B. HOYE,
II; DR. ALVEDA C. KING; DR. DAY GARDNER,

                Amici Supporting Appellants.

                           _______________

Appeal from the United States District Court for the Eastern
District of Virginia, at Norfolk. Raymond A. Jackson, District
Judge. (2:13-cv-00053-RAJ-DEM)


Argued:   March 25, 2015                     Decided:   May 19, 2015


Before WILKINSON and HARRIS, Circuit Judges, and DAVIS, Senior
Circuit Judge.


Vacated and remanded by published opinion.      Judge Wilkinson
wrote the opinion, in which Judge Harris and Senior Judge Davis
joined.
ARGUED: Charles Manley Allen, GOODMAN, ALLEN & FILETTI, PLLC,
Glen Allen, Virginia, for Appellants. Pratik A. Shah, AKIN GUMP
STRAUSS HAUER & FELD LLP, Washington, D.C., for Appellee.     ON
BRIEF: William F. Demarest III, GOODMAN, ALLEN & FILETTI, PLLC,
Glen Allen, Virginia, for Appellants.    Anthony T. Pierce, Z.W.
Julius Chen, Matthew A. Scarola, AKIN GUMP STRAUSS HAUER & FELD
LLP, Washington, D.C., for Appellee.       Eugene Volokh, FIRST
AMENDMENT AMICUS BRIEF CLINIC, Mairead Dolan, Student, UCLA
SCHOOL OF LAW, Los Angeles, California, for Amici Electronic
Frontier Foundation and ACLU of Virginia.    Catherine W. Short,
LIFE LEGAL DEFENSE FOUNDATION, Ojai, California; Nikolas T.
Nikas, Dorinda C. Bordlee, BIOETHICS DEFENSE FUND, Metairie,
Louisiana, for Amici National Black Pro-Life Coalition, Walter
B. Hoye II, Dr. Alveda C. King, and Dr. Day Gardner.




                               2
WILKINSON, Circuit Judge:

      The       Radiance      Foundation       published     an     article        online

entitled      “NAACP:      National      Association       for     the    Abortion       of

Colored People” that criticized the NAACP’s stance on abortion.

In    response      to   a     cease-and-desist      letter        from    the     NAACP,

Radiance sought a declaratory judgment that it had not infringed

any     NAACP      trademarks.     The     NAACP   then      filed        counterclaims

alleging trademark infringement and dilution.

      The Lanham Act protects against consumer confusion about

the source or sponsorship of goods or services. Persons may not

misappropriate trademarks to the detriment of consumers or of

the marks themselves. However, the Act’s reach is not unlimited.

To    find    Lanham     Act    violations       under     these     facts       risks   a

different form of infringement -- that of Radiance’s expressive

right to comment on social issues under the First Amendment.

Courts have taken care to avoid Lanham Act interpretations that

gratuitously court grave constitutional concerns, and we shall

do so here. We hold that Radiance is not liable for trademark

infringement or dilution of defendant’s marks by tarnishment. We

vacate the injunction against Radiance entered by the district

court        and     remand      with      instructions          that       defendant’s

counterclaims likewise be dismissed.




                                           3
                                                I.

       The    National       Association        for       the    Advancement      of     Colored

People, better known by its acronym “NAACP,” is this country’s

“oldest and largest civil rights organization,” Radiance Found.,

Inc. v. NAACP, 25 F. Supp. 3d 865, 872 (E.D. Va. 2014), and one

that    holds       a    place    of    honor       in    our    history.    It        champions

“political, educational, social, and economic equality of all

citizens” while working to eliminate racial and other forms of

prejudice within the United States. Id. Since its formation, it

has pursued these objectives not only through litigation but

also    through         community      outreach,         informational       services,      and

educational activities on issues of significance to the African

American community. See id. The NAACP owns several trademarks,

among       them        “NAACP”     (federally            registered)       and        “National

Association for the Advancement of Colored People.”

       The Radiance Foundation, established by Ryan Bomberger, is

also    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 uses as its platform two websites,

TheRadianceFoundation.org and TooManyAborted.com, where it posts

articles       on        topics     such     as          race     relations,       diversity,

fatherlessness,           and     the    impact          of     abortion    on    the     black

community. Id. at 873. Radiance also runs a billboard campaign

                                                4
for    TooManyAborted.com;          individuals        may     sponsor         these

billboards, licensing the artwork from Radiance. In addition to

its   billboard    campaign,    Radiance      funds   its    endeavors    through

donations from visitors to its websites, which are facilitated

by “Donate” buttons on the webpages that link to a PayPal site.

      In January 2013, Bomberger authored an article criticizing

the   NAACP’s     annual    Image   Awards,       entitled   “NAACP:     National

Association for the Abortion of Colored People.” See J.A. 869.

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. Though the text of

the article was identical across the sites, the headlines and

presentation      varied     slightly.       On    TheRadianceFoundation.com,

directly below the headline was an image of a TooManyAborted

billboard with the headline “NAACP: National Association for the

                                         5
Abortion     of    Colored   People”       repeated         next   to    it.     Id.     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. Id. at 899. 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.” Id. at 869, 989. Finally on LifeNews.com, the third-

party site, the NAACP’s Scales of Justice appeared as a graphic

underneath the headline. Id. at 101.

       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. Radiance thereupon 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 15 U.S.C.

§§ 1114(1) and 1125(a) and Virginia state law, and trademark

dilution under 15 U.S.C. § 1125(c).

       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, or a

                                           6
colorable      imitation,        created     a    likelihood    of   confusion   among

consumers. Radiance Found., 25 F. Supp. 3d at 878-79.

       The district court also found that the use of the mark

created a likelihood of dilution by tarnishment by associating

the NAACP and its marks with a pro-abortion position. Id. at

880,   895.      The    court    found   that      Radiance’s    actions    failed   to

qualify     as    fair        use,   news    reporting,      news    commentary,     or

noncommercial          use.   Radiance      was   accordingly    deemed     ineligible

for those usages protected under the Lanham Act itself. Id. at

897-99.

       The district court issued a permanent injunction “against

any use [by Radiance] of ‘National Association for the Abortion

of Colored People’ that creates a likelihood of confusion or

dilution.” Id. at 902. However, it declined to award any damages

or attorney’s fees, as it found the NAACP had failed to make the

case that they were warranted. Id. at 899-901.

       Radiance now appeals. “We review a judgment following a

bench trial under a mixed standard of review -- factual findings

may be reversed only if clearly erroneous, while conclusions of

law, . . . are examined de novo.” Roanoke Cement Co. v. Falk

Corp., 413 F.3d 431, 433 (4th Cir. 2005). For the reasons given

below,    we     must    reverse.     The    NAACP    does     not   have   actionable

claims for trademark infringement here, and Radiance’s use of

the NAACP’s marks or colorable imitations falls squarely within

                                              7
the exceptions to trademark dilution specifically included in

the Lanham Act to avoid encroaching on free speech rights.

                                              II.

                                               A.

       We   must    first      review       briefly       the    Lanham    Act    principles

relevant to this action. The Lanham Act’s provisions prohibiting

trademark infringement, 15 U.S.C. §§ 1114(1) and 1125(a), exist

to    protect    consumers        from      confusion       in    the    marketplace.      See

Qualitex     Co.    v.    Jacobson          Prods.    Co.,       514    U.S.    159,   162–64

(1995). Trademarks designate the source or affiliation of goods

and    services     in    order       to    provide       consumers      with    information

about those goods and services, allowing mark holders to build

and    benefit     from     the    reputation         of    their       brands.    Trademark

infringement laws limit the ability of others to use trademarks

or their colorable imitations in commerce, so that consumers may

rely on the marks to make purchasing decisions. See CPC Int’l,

Inc. v. Skippy Inc., 214 F.3d 456, 461 (4th Cir. 2000) (“The

basic    objectives       of    trademark           law    are   to     encourage      product

differentiation, promote the production of quality goods, and

provide     consumers          with        information       about       the     quality   of

goods.”).

       Trademark protection, however, comes at a potential cost to

free expression. Much like advertising regulations that prohibit

using   false      or    misleading         information,         trademark      infringement

                                               8
laws   restrict       speech    in     order       to    promote      the    government’s

interest        in        protecting              consumers          from         confusing

misappropriations of product identifications. However, Congress

“did    not    intend     for    trademark         laws       to   impinge       the   First

Amendment     rights     of    critics    and      commentators.”           Lamparello    v.

Falwell, 420 F.3d 309, 313 (4th Cir. 2005). The Lanham Act and

First Amendment may be in tension at times, but they are not in

conflict so long as the Act hews faithfully to the purposes for

which it was enacted. Mattel, Inc. v. MCA Records, Inc., 296

F.3d   894,     900     (9th    Cir.    2002).          The   risk    of    impinging     on

protected speech is much greater when trademarks serve not to

identify goods but rather to obstruct the conveyance of ideas,

criticism,      comparison,      and     social         commentary.        The    canon   of

constitutional avoidance in this area is thus not a device of

judicial      evasion    but    an     effort      to     reconcile        the   commercial

values protected by the Lanham Act and the democratic value of

expressive freedom. See Rogers v. Grimaldi, 875 F.2d 994, 998

(2d Cir. 1989); cf. Edward J. DeBartolo Corp. v. Fla. Gulf Coast

Bldg. & Constr. Trades Council, 485 U.S. 568, 575 (1988).

       It is for this reason that an actionable trademark claim

does   not    simply     require       that   the       alleged      infringer     used   in

commerce the mark that the trademark holder possesses. It also

requires that the infringer’s use be “in connection with” goods

or services in a manner that is “likely to cause confusion”

                                              9
among    consumers      as    to    the        goods’          or    services’       source     or

sponsorship. 15 U.S.C. §§ 1114(1)(a) & 1125(a)(1); see People

for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359,

366    (4th   Cir.    2001)    (“PETA”);            United      We    Stand    Am.,     Inc.    v.

United We Stand, Am. New York, Inc., 128 F.3d 86, 91-92 (2d Cir.

1997)    (“It   poked    fun       at    the    plaintiff,            but     did     not    cause

consumer confusion as to source or origin.” (emphasis added)).

Use of a mark that does not satisfy these two criteria is not

trademark infringement. Lamparello, 420 F.3d at 313-14.

                                               B.

       The first element of trademark infringement at issue is

thus    whether      Radiance’s         use    of        the    NAACP’s       marks    was     “in

connection with the sale, offering for sale, distribution, or

advertising of any goods or services.” 15 U.S.C. § 1114(1)(a);

see also id. § 1125(a)(1) (requiring mark be used “in connection

with any goods or services”). The NAACP urges us to give this

requirement a “broad construction,” Appellee’s Br. at 18, but

that    construction     would      expose          to    liability      a    wide     array    of

noncommercial        expressive         and    charitable            activities.       Such     an

interpretation would push the Lanham Act close against a First

Amendment wall, which is incompatible with the statute’s purpose

and stretches the text beyond its breaking point. We decline to

reach so far.



                                               10
       At least five of our sister circuits have interpreted this

element as protecting from liability all noncommercial uses of

marks. Farah v. Esquire Magazine, 736 F.3d 528, 541 (D.C. Cir.

2013); Utah Lighthouse Ministry v. Found. for Apologetic Info. &

Research, 527 F.3d 1045, 1052-54 (10th Cir. 2008); Bosley Med.

Inst., Inc. v. Kremer, 403 F.3d 672, 676-77 (9th Cir. 2005);

Taubman Co. v. Webfeats, 319 F.3d 770, 774 (6th Cir. 2003);

Porous Media Corp. v. Pall Corp., 173 F.3d 1109, 1120 (8th Cir.

1999). But see United We Stand, 128 F.3d at 89-90. We have not

taken    a   position       on    whether     “in       connection       with”   goods   or

services indicates a commercial use. Lamparello, 420 F.3d at

313-14.

       At the very least, reading the “in connection with” element

to take in broad swaths of noncommercial speech would be an

“overextension” of the Lanham Act’s reach that would “intrude on

First    Amendment     values.”          Rogers,    875    F.2d     at    998;   see   also

Taubman,     319     F.3d    at    774    (stating       that    the     “Lanham   Act   is

constitutional because it only regulates commercial speech”). It

is true that neither of the Lanham Act’s infringement provisions

explicitly mentions commerciality. Lamparello, 420 F.3d at 314.

Still, this provision must mean something more than that the

mark    is   being    used    in    commerce       in    the    constitutional     sense,

because      the   infringement          provisions       in    §   1114(1)(a)     and   §

1125(a)(1) include a separate Commerce Clause hook. Bosley, 403

                                             11
F.3d at 677; Int’l Bancorp, LLC v. Societe des Bains de Mer et

du Cercle des Estrangers a Monaco, 329 F.3d 359, 363-64 (4th

Cir. 2003); United We Stand, 128 F.3d at 92-93.

      Although this case does not require us to hold that the

commercial speech doctrine is in all respects synonymous with

the     “in    connection     with”     element,        we     think   that   doctrine

provides much the best guidance in applying the Act. The “in

connection      with”    element       in    fact      reads    very   much    like     a

description      of     different      types      of    commercial      actions:      “in

connection with the sale, offering for sale, distribution, or

advertising of any goods or services.” 15 U.S.C. § 1114(1)(a)

(emphasis added).

      Use of a protected mark as part of “speech that does no

more than propose a commercial transaction” thus plainly falls

within the Lanham Act’s reach. United States v. United Foods,

Inc., 533 U.S. 405, 409 (2001). Courts also look to the factors

outlined in Bolger v. Youngs Drug Products Corp., 463 U.S. 60,

66-67 (1983): whether the speech is an advertisement; whether

the speech references a particular good or service; and whether

the speaker (the alleged infringer) has a demonstrated economic

motivation      for   his    speech.      Greater      Balt.    Ctr.   for    Pregnancy

Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 285 (4th Cir.

2013)    (en    banc).      These   are     not   exclusive       factors,     and    the



                                            12
presence    or    absence       of     any       of   them     does      not     necessitate           a

particular result.

       In   the    context        of        trademark        infringement,               the     Act’s

purpose, as noted, is to protect consumers from misleading uses

of marks by competitors. Thus if in the context of a sale,

distribution,      or     advertisement,              a   mark     is    used       as    a     source

identifier,       we     can   confidently             state      that     the      use        is    “in

connection with” the activity. Even the Second Circuit, which

rejected noncommerciality as an invariable defense to Lanham Act

liability,       conceded       that        a     “crucial”         factor       is       that       the

infringer “us[ed] the Mark not as a commentary on its owner, but

instead as a source identifier.” United We Stand, 128 F.3d at

92. The danger of allowing the “in connection with” element to

suck   in   speech       on    political         and      social     issues         through         some

strained     or    tangential           association            with       a    commercial             or

transactional       activity         should        thus      be    evident.         Courts          have

uniformly understood that imposing liability under the Lanham

Act for such speech is rife with the First Amendment problems.

       Finally,    in     order      to     determine        whether          the    use       is   “in

connection       with”     goods       or       services,      we       must    consider            what

qualifies as a good or service. The Lanham Act does not directly

define either term, but we can deduce their meaning from other

defined terms and common usage. A “good” is best understood as a

valuable product, physical or otherwise, that the consumer may

                                                 13
herself employ. See 15 U.S.C. § 1127 (noting that a mark may be

used in commerce in relation to a good when placed on a good,

its container, its tag, or its associated documents); Black’s

Law   Dictionary     809   (10th    ed.      2014)   (defining    “goods”    as

“[t]hings that have value, whether tangible or not”). A service

is a more amorphous concept, “denot[ing] an intangible commodity

in the form of human effort, such as labor, skill, or advice.”

Black’s   Law   Dictionary      1576.    Because     Congress    intended   the

Lanham    Act   to    protect      consumers     from    confusion    in    the

marketplace, it is probable that the Act is meant to cover a

wide range of products, whether “goods” or “services.” See Yates

v. United States, 135 S. Ct. 1074, 1082 (2015) (“Ordinarily, a

word's usage accords with its dictionary definition. In law as

in life, however, the same words, placed in different contexts,

sometimes mean different things.”).

      It is clear, therefore, that despite the need to reconcile

the reach of the Lanham Act with First Amendment values, “goods

or services” remains a broad and potentially fuzzy concept. That

is yet another reason why the “in connection with” language must

denote a real nexus with goods or services if the Act is not to

fatally collide with First Amendment principles.

                                        C.

      The second element in establishing Lanham Act liability is

whether the use of the trademark is “likely to cause confusion”

                                        14
among consumers regarding the source or sponsorship of the goods

or services. 15 U.S.C. §§ 1114(1)(a) & 1125(a)(1)(A). Here it is

important to remember that “trademark infringement protects only

against mistaken purchasing decisions and not against confusion

generally.” Lang v. Ret. Living Publ’g Co., 949 F.2d 576, 583

(2d Cir. 1991) (quotation marks omitted); see also Bosley, 403

F.3d at 677. That is because a trademark “only gives the right

to prohibit the use of it so far as to protect the owner’s good

will    against         the      sale     of        another’s         product      as   his.”

Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (emphasis

added).

       This     court      and     others      have      employed         any   number    of

frameworks      to   assess       the    likelihood         of    confusion,       generally

balancing a slew of relevant factors. See, e.g., Pizzeria Uno

Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). This court

considers “the strength of the [trademark holder’s] mark, the

degree of similarity between the two marks, the similarity of

the goods they identify, the similarity of the facilities used

in   the      businesses,        the    similarity       of      the    advertising,     the

[infringer’s]        intent,      and    the    presence         of    actual   confusion,”

Anheuser-Busch, Inc. v. L. & L. Wings, Inc., 962 F.2d 316, 320

(4th Cir. 1992), as well as the “quality of the [infringer’s]

product,”      and   the      “sophistication          of     the      consuming    public,”

George & Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 393

                                               15
(4th Cir. 2009). These factors are not a “rigid formula” but

rather “only a guide,” Anheuser-Busch, 962 F.2d at 320, and each

factor may be more or less relevant or important for any given

case, Lamparello, 420 F.3d at 314-15.

      In conducting such an inquiry, which is inherently fact-

bound and context dependent, we must bear in mind the purpose

behind it -- preventing consumer confusion of the infringer’s

goods or services with those of the trademark holder’s. When the

infringer’s intent is something other than piggybacking off a

mark holder’s success by tricking consumers into purchasing his

goods instead, the other factors must be evaluated in light of

that intent and purpose. See Louis Vuitton Malletier S.A. v.

Haute Diggity Dog, LLC, 507 F.3d 252, 261 (4th Cir. 2007) (“An

intent      to   parody    is    not   an    intent     to   confuse      the   public.”

(quotations       marks    omitted)).        Although    finding     an    alternative

intent does not prevent us from applying the factors, it does

“influence[] the way in which [they] are applied.” Id.

      Marks      used     to    parody,     satirize,    criticize,       comment,   or

compare      make       “the     multi-factored         inquiry      under      Pizzeria

Uno . . . at best awkward” and require that the use be assessed

in   that    context.      Anheuser-Busch,        962    F.2d   at   321     (quotation

marks omitted). For example, the strength of the mark and the

similarity between the marks often work in reverse for cases of

parody and satire as compared to a standard infringement case.

                                             16
Louis   Vuitton,   507   F.3d    at    261.    “The   keystone   of   parody   is

imitation,” Anheuser-Busch, 962 F.2d at 321, and the similarity

-- with key differences -- between the original mark and the

parody may only enhance the effect of the latter and the “strong

mark’s fame and popularity [are] precisely the mechanism[s] by

which likelihood of confusion is avoided,” Louis Vuitton, 507

F.3d at 261.

     As with the “in connection with” element, the “likelihood

of confusion” test, if misapplied, can implicate free speech

concerns.   When   the    “use    of     the    trademark   does      not   imply

sponsorship or endorsement of the product because the mark is

used only to describe the thing, rather than to identify its

source,” restricting speech does not serve the purpose of the

Lanham Act. New Kids on the Block v. News Am. Publ’g, Inc., 971

F.2d 302, 306-08 (9th Cir. 1992). Indeed, criticism or parody of

a mark holder would be difficult indeed without using the mark.

Id. Trademark protections exist neither to allow companies to

protect themselves from criticism nor to permit them to “control

language.” Skippy, 214 F.3d at 462 (quoting Mark A. Lemley, The

Modern Lanham Act and the Death of Common Sense, 108 Yale L.J.

1687, 1710-11 (1999)). Even some amount of “actual confusion”

must still be weighed against the interest in a less fettered

marketplace of social issues speech. See Rogers, 875 F.2d at

1001.

                                        17
                                           III.

       In applying the above principles, we think the district

court made several errors. Those mistakes extended the Lanham

Act beyond the purposes it was intended to serve.

                                             A.

       In finding that Radiance’s use of the NAACP’s marks was “in

connection with” goods or services, the district court erred in

several    respects.      To    begin,     the    court    held   that     because      the

Radiance    article      appeared       in    a   Google     search    for      the    term

“NAACP,” it diverted “Internet users to Radiance’s article as

opposed    to    the    NAACP’s      websites,”       which    thereby         created    a

connection to the NAACP’s goods and services. Radiance Found.,

Inc. v. NAACP, 25 F. Supp. 3d 865, 884 (E.D. Va. 2014). But

typically the use of the mark has to be in connection with the

infringer’s goods or services, not the trademark holder’s. See

Utah   Lighthouse       Ministry      v.     Found.    for    Apologetic        Info.     &

Research, 527 F.3d 1045, 1053-54 (10th Cir. 2008) (stating that

“the defendant in a trademark infringement . . . case must use

the mark in connection with the goods or services of a competing

producer, not merely to make a comment on the trademark owner's

goods or services”).

       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

                                             18
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.

       In People for the Ethical Treatment of Animals v. Doughney,

we stated that an infringer “need only have prevented users from

obtaining or using [the trademark holder’s] goods or services,

or need only have connected the [infringing] website to other’s

goods or services” in order to satisfy the “in connection with”

requirement. 263 F.3d 359, 365 (4th Cir. 2001). But that rule

applies specifically where the infringer has used the trademark

holder’s     mark       in   a   domain       name.    Id.    at    365-66.    Neither    of

Radiance’s        websites       used    an    NAACP    mark       in   its   domain    name.

Rather, Radiance used the NAACP’s marks only in the title and

body    of   an    article       criticizing          the    NAACP.     Nothing   in    PETA

indicates that the use of a mark in the course of disseminating

such an idea is on that account sufficient to establish the

requisite relationship to goods or services. PETA simply does

not govern the application of the “in connection with” element

in this case.



                                               19
        The district court proceeded to find that Radiance’s use of

the NAACP’s marks was also in connection with Radiance’s goods

or services. Radiance Found., 25 F. Supp. 3d at 884-85. But the

court’s           analysis      failed        to   demonstrate         a    sufficient        nexus

between the specific use of the marks and the sale, offer for

sale,    distribution,             or    advertisement          of   any     of   the   goods   or

services          that    the   court     invoked.        The    court      first    found    that

there was a sufficient nexus “with Radiance’s own information

services”           because        Radiance        “provided         information”        on     its

website. Id. at 884. That ruling, however, neuters the First

Amendment. The provision of mere “information services” without

any commercial or transactional component is speech -- nothing

more.

        In the alternative, the court held that Radiance’s use of

the   NAACP’s         marks     was     in    connection        with   goods      or    services,

because the use was “part of social commentary or criticism for

which they solicit donations and sponsorship.” Id. The NAACP

echoes the district court, arguing that the transactional nature

of    the     billboard         campaign       and      Radiance’s     fundraising        efforts

place Radiance’s use of the marks “comfortably within” the reach

of the “in connection with” element. Appellee’s Br. at 24-26.

        We         need      not        address         this     point        with      absolute

pronouncements. Suffice it to say that the specific use of the

marks        at    issue     here       was    too      attenuated         from   the   donation

                                                   20
solicitation and the billboard campaign to support Lanham Act

liability.        Although      present    on      the   article    page,        the   Donate

button was off to the side and did not itself use the NAACP’s

marks in any way. The billboard campaign was displayed on a

different page altogether. A visitor likely would not perceive

the   use    of     the    NAACP’s       marks     in    the   article      as    being      in

connection with those transactional components of the website.

It is important not to lose perspective. The article was just

one   piece       of     each     Radiance       website’s       content,        which      was

comprised         of     articles,        videos,        and    multimedia         advocacy

materials.        That    the     protected      marks    appear    somewhere          in   the

content of a website that includes transactional components is

not alone enough to satisfy the “in connection with” element. To

say it was would come too close to an absolute rule that any

social issues commentary with any transactional component in the

neighborhood           enhanced    the    commentator’s         risk   of    Lanham         Act

liability.

      The Supreme Court has warned “that charitable appeals for

funds . . . involve a variety of speech interests . . . that are

within      the    protection        of    the      First      Amendment.”        Vill.      of

Schaumburg v. Citizens for a Better Env't, 444 U.S. 620, 632

(1980). Such solicitation, the Court stated, is not a “variety

of purely commercial speech.” Id. Courts are thus well-advised

to tread cautiously when a trademark holder invokes the Lanham

                                              21
Act against an alleged non-profit infringer whose use of the

trademark    holder’s       marks   may    be    only      tenuously     related   to

requests    for    money.    Again,   this      is   not    to   say   that   in   all

instances a solicitation by a non-profit is immune from Lanham

Act liability. A solicitation may satisfy the “in connection

with” element if the trademark holder demonstrates a sufficient

nexus between the unauthorized use of the protected mark and

clear transactional activity. Such a nexus may be present, for

example, where the protected mark seems to denote the recipient

of the donation. However, where, as here, the solicitations are

not closely related to the specific uses of the protected marks,

we are compelled to conclude that the district court erred in

ruling that the “in connection element” was met.

                                          B.

      The district court likewise considered the likelihood of

confusion from Radiance’s use of the marks. First and foremost,

it based its finding in great part on whether consumers thought

“NAACP” in fact stood for “National Association for the Abortion

of Colored People.” Radiance Found., 25 F. Supp. 3d at 887-89

(relying on survey evidence). Trademark infringement provisions

do   not   protect    against    confusion       about     the   marks   themselves

because    marks     are   not   goods    or    services     but   instruments     to

identify goods and services. Louis Vuitton Malletier S.A. v.

Haute Diggity Dog, LLC, 507 F.3d 252, 263 (4th Cir. 2007) (“The

                                          22
misspellings pointed out by LVM [in the Vuitton name] are far

more likely in this context to indicate confusion over how to

spell the product name than any confusion over the source or

sponsorship of the ‘Chewy Vuiton’ dog toys.”). Thus confusion

about what a particular trademark says or looks like is not

relevant for infringement claims. We may certainly account for

similarities       between      the   trademark        holder’s       and    infringer’s

marks in the likelihood of confusion analysis, but only in the

context of how those similarities create confusion about the

source of any products the marks identify.

      Likewise, trademark infringement is not designed to protect

mark holders from consumer confusion about their positions on

political or social issues. The evidence of “actual confusion”

relied on by the district court consisted of phone calls to the

NAACP   by    people      who    took     issue   with        the    NAACP       supporting

abortion.      Radiance         Found.,    25     F.     Supp.       3d      at     888-89.

“[I]ndignation       is    not     confusion,”         Girl    Scouts       of     U.S.   v.

Personality Posters, Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y.

1969), at least not as pertains to trademark infringement, and

at   best    the   calls     demonstrated       confusion       as    to     the    NAACP’s

policy positions rather than any good or service. Policy stances

are neither goods nor services, though the means of conveying

them may be.



                                           23
       Political       discourse        is     the       grist    of    the    mill      in   the

marketplace of ideas. It may be that the only -- but also the

best -- remedy available to a trademark holder is to engage in

responsive speech. For even where a speaker lies, “more accurate

information will normally counteract the lie.” United States v.

Alvarez, 132 S. Ct. 2537, 2556 (2012) (Breyer, J., concurring in

the judgment). The NAACP is a renowned civil rights organization

with numerous mechanisms for connecting with its membership and

the    public.       Organizations           of    its     size    and       stature     possess

megaphones       all    their      own.       “Actual        confusion”       as    to   a    non-

profit’s mission, tenets, and beliefs is commonplace, but that

does    not    transform          the   Lanham         Act    into      an    instrument      for

chilling or silencing the speech of those who disagree with or

misunderstand a mark holder’s positions or views. See Rogers v.

Grimaldi, 875 F.2d 994, 1001 (2d Cir. 1989).

       The district court also concluded that some consumers might

be    confused       about   an    affiliation           between       the   authors     of   the

article and the NAACP. Radiance Found., 25 F. Supp. 3d at 889.

But it is not immediately apparent how someone would confuse an

article which is strongly critical of an organization with the

organization itself. The mark in this case was used primarily to

identify      the      NAACP      as    the       object     of    Radiance’s       criticism,

resembling       a     descriptive        or      nominative       fair       use   albeit     by

employing      a     modified       version         of    the     name.      Admittedly,      the

                                                  24
attention span on the Internet may not be long, but the briefest

familiarity with the article would quickly create the impression

the author was no friend of the NAACP. Indeed, in just the first

two lines, the piece refers to the NAACP as an “out-of-touch

liberal organization” and accuses its Image Awards of honoring

“black      imagery    churned     out    by       often   racist,       anti-Christian,

perpetually     sexist,        violent    and      pornographic      Hollywood.”        J.A.

869.   Intemperate       and    worse     as    the    commentary     is,      holding   it

actionable      risks    creating        the    paradox     that    criticism      equals

confusion,     thereby       permitting        companies     to    shield      themselves

from   adverse    assessments.          Indeed,       “‘[m]uch     useful      social    and

commercial discourse would be all but impossible if speakers

were under threat of an infringement lawsuit every time they

made reference to a person, company or product by using its

trademark.’” CPC Int’l, Inc. v. Skippy Inc., 214 F.3d 456, 462

(4th Cir. 2000) (quoting New Kids on the Block v. News Am.

Publ’g, Inc., 971 F.2d 302, 307 (9th Cir. 1992)).

       It    remains     essential       in    any     analysis     of    confusion      to

consider fully the purpose with which the mark was being used.

The trial court did entertain the possibility of parody, but

once it found that Radiance had not engaged in a successful

parody, it ended its inquiry there. Radiance Found., 25 F. Supp.

3d   at     891-93.     If   not   quite       parody,     the     use    of    “National

Association for the Abortion of Colored People” in this context

                                              25
may      be      more         akin       to         satire,     which         “works         by

distort[ing] . . . the familiar with the pretense of reality in

order    to     convey    an    underlying           critical    message.”         Farah    v.

Esquire Magazine, 736 F.3d 528, 537 (D.C. Cir. 2013) (quotation

marks    omitted).       Whatever        the    label    affixed       to    the    article,

Radiance’s twist on the famous moniker follows in the same vein

as articles that refer to the NRA as the “National Republican

Association” or the ACLU as the “Anti-Christian Lawyers Union.”

Amicus Br. of Elec. Frontier Found. & ACLU of Va. at 3-4, 6-7.

Biting,       surely;    distortive,           certainly;       Radiance’s         ploy    was

nonetheless      effective          at   conveying      sharply       what   it    was     that

Radiance wished to say. The implications for the likelihood of

confusion factors are thus obvious: parody or satire or critical

opinion generally may be more effective if the mark is strong

and     the    satirical       or    critical        version     is     similar      to    the

original. The critical message conveyed by the satirical mark

itself    and    in     the    commentary       that     follows       ensures      that    no

confusion about the source of the commentary will last, if in

fact it is generated at all.

      It is important moreover to pay sufficient attention to the

full context in which the mark was used, which diminishes the

likelihood of confusion about source even further. The domain

names and webpage headings clearly denote other organizations:

The Radiance Foundation or TooManyAborted. For each site, this

                                               26
post   was   one   of   dozens   of     articles    on   social   and   political

issues.

       Suppose, however, a viewer caught no more than the title of

the article: “NAACP: National Association for the Abortion of

Colored People.” The claim against Radiance would still not lie.

Titles, as part of expressive works, “require[] more protection

than the labeling of ordinary” goods. Rogers, 875 F.2d at 998.

For consumers understand and expect titles to pertain to the

contents of the underlying work rather than authorship or the

publisher. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894,

902 (9th Cir. 2002); Rogers, 875 F.2d at 999-1000. Provided the

title is connected to and not misleading about the contents and

does not use the mark in a way that clearly suggests authorship,

see Rogers, 875 F.2d at 999, use of a mark in a title will

generally not result in the type of consumer confusion necessary

to support infringement claims. In this case, the title related

to   and   conveyed     the   subject    of   the   article:      the   NAACP   and

Radiance’s views of its alleged stance on abortion. The use of

the satirical modification of the true NAACP name was designed,

as many titles are, to be eye-catching and provocative in a

manner that induces the reader to continue on. We cannot find

that use of the NAACP marks in the title of the Radiance article

created a likelihood of confusion as to the piece’s authorship

or affiliation.

                                         27
      We have identified individual difficulties with appellee’s

position,      but   it    is    well    to     understand       the    matter    in    its

totality. The trial court found that using marks in a highly

critical      article     that    lambasts         the   NAACP    for   its    views    and

actions    constituted          trademark      infringement        because     the     site

solicits financial support for its activities, albeit attenuated

from the use of the mark, and some consumers may be confused

about the NAACP’s true name and political positions. We 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. Any other holding would severely restrict all kinds

of speakers from criticizing all manner of corporate positions

and   activities        and     propel    the      Lanham    Act    into      treacherous

constitutional terrain.

                                             IV.

      The district court further held that Radiance diluted the

“NAACP” and “National Association for the Advancement of Colored

People” trademarks by tarnishing them in violation of 15 U.S.C.

§ 1125(c). Radiance Found., Inc. v. NAACP, 25 F. Supp. 3d 865,

899 (E.D. Va. 2014). We respectfully disagree. Radiance’s use of

the   marks    was   undeniably         to    criticize     the    NAACP’s      perceived



                                              28
position on abortion, thus falling squarely within the statute’s

explicit exclusions. See 15 U.S.C. § 1125(c)(3).

                                             A.

      Whereas the law of trademark infringement is “motivated by

an   interest    in    protecting       consumers”        from    confusion       as    to   a

product’s     source,       the   law   of    dilution         defends    the    trademark

itself. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 429

(2003); see also Nissan Motor Co. v. Nissan Computer Corp., 378

F.3d 1002, 1012 (9th Cir. 2004) (“The point of dilution law is

to protect the owner’s investment in his mark.”). Specifically,

the law allows “the owner of a famous mark that is distinctive”

to seek an injunction where another person’s use of a mark “is

likely to cause dilution by blurring or dilution by tarnishment

of the famous mark, regardless of the presence or absence of

actual   or     likely      confusion,       of        competition,       or    of     actual

economic injury.” 15 U.S.C. § 1125(c)(1). Dilution by blurring

is an “association arising from the similarity between a mark or

trade name and a famous mark that impairs the distinctiveness of

the famous mark.” Id. § 1125(c)(2)(B). By contrast, dilution by

tarnishment -- the theory at issue here -- is an association

“that    harms        the    reputation           of     the     famous        mark.”     Id.

§ 1125(c)(2)(C).

      To state a prima facie claim of dilution by tarnishment,

therefore, the NAACP must satisfy four elements:

                                             29
        (1) that [it] owns a famous mark that is distinctive;

        (2) that [Radiance] has commenced using a mark in
        commerce that allegedly is diluting the famous mark;

     (3) that a similarity between [the diluter’s] mark and
     the famous mark gives rise to an association between
     the marks; and

     (4) that the association is likely . . . to harm the
     reputation of the famous mark.

Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 168 (4th Cir.

2012) (quoting Louis Vuitton Malletier S.A. v. Haute Diggity

Dog, LLC, 507 F.3d 252, 264-65 (4th Cir. 2007)).

     The first three elements are met here: the marks Radiance

used in commerce were either identical or highly similar to the

NAACP’s undoubtedly famous marks. As for the fourth element,

harming a famous mark’s reputation means “creat[ing] consumer

aversion to the famous brand.” Rosetta Stone, 676 F.3d at 167.

Such aversion may be shown when the famous mark is “linked to

products of shoddy quality, or is portrayed in an unwholesome or

unsavory context.” Id. (quoting Scott Fetzer Co. v. House of

Vacuums    Inc.,   381   F.3d   477,   489   (5th   Cir.   2004));    see    also

Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 111 (2d Cir. 2010).

Radiance has not challenged the district court’s finding that

the article was likely to harm the NAACP’s marks. Indeed, the

whole    point   of   the   article    was   to   criticize   the   NAACP,   and

Radiance attempted to accomplish that goal in part by playing



                                        30
off the NAACP’s name. The NAACP thus established a prima facie

case of dilution by tarnishment.

                                                 B.

      However, that does not end the inquiry. The law provides

three broad, overlapping categories within which any use of a

famous mark, even if likely to cause harm or blurring, is not

actionable: fair use; news reporting and news commentary; and

noncommercial use. 15 U.S.C. § 1125(c)(3). Radiance asserts that

its   use    of     the    NAACP’s       marks    qualifies            for    protection      under

these    affirmative          defenses.      Because          we       hold    that   Radiance’s

speech      falls      plainly     within        the       fair       and    noncommercial       use

exclusions,         we     have     no    need        to     address          Radiance’s      “news

reporting and news commentary” defense.

      The    first        exclusion       covers       “[a]ny         fair    use, including       a

nominative        or     descriptive       fair       use,”       and       “including     use    in

connection        with,”          among     other           things,          “identifying        and

parodying, criticizing, or commenting upon the famous mark owner

or    the    goods       or   services      of        the    famous          mark   owner.”      Id.

§ 1125(c)(3)(A)(ii)            (emphasis         added).          A    descriptive     fair      use

“applies when the [dilution] defendant is using a trademark in

its primary, descriptive sense to describe the defendant's goods

or services,” whereas “nominative fair use comes into play when

the defendant uses the famous mark to identify or compare the

trademark      owner's        product.”      Rosetta          Stone,          676   F.3d   at    169

                                                 31
(quotation        marks    omitted).      No    use     may     be      “a   designation     of

source    for      the    [user’s]       own    goods      or     services.”      15   U.S.C.

§ 1125(c)(3)(A).          That     is,    the       fair    use      exclusion     does     not

provide a safe harbor for one who uses another’s famous mark as

a trademark. See Louis Vuitton, 507 F.3d at 266. Finally, good

faith    is   a    “common       component”     of     fair     use     analysis.      Rosetta

Stone, 676 F.3d at 169-70.

       The NAACP, as the district court recognized, is an advocacy

organization. See Radiance Found., 25 F. Supp. 3d at 872. As

such,    it   takes       positions      on    public      issues       on    behalf   of   its

stated    mission;        the    organization         exists       in    part    to    be   for

things. The Radiance article used the NAACP’s marks to comment

upon what it sees as the policies the NAACP supports or does not

support, as the case may be. Within the context of the article,

the use of the NAACP’s famous marks unquestionably framed and

referenced the NAACP’s policy positions, or at least Radiance’s

view     of   what       those    positions         are.     The      article     repeatedly

referred      to   the     NAACP’s       purported         support      for    abortion     and

Planned Parenthood, using sexual and other graphic metaphors to

hammer the point home. Even if we were to take the title out of

context and view it separately from the rest of the article, the

use was still nominative, because it explicitly referred to what




                                               32
the   author     believes    the    NAACP    stands   for:    the   abortion    of

African American children. *

      The   district        court    also    reiterated      its    belief     that

referring   to    the   NAACP   as    the    “National   Association    for    the

Abortion of Colored People” is not a parody. Id. at 897. The

fair use defense, however, is not limited to parody; it also

embraces uses that “criticiz[e]” or “comment[] upon” the NAACP

or its services. 15 U.S.C. § 1125(c)(3)(A)(ii). Regardless of

whether Radiance’s use of the NAACP’s marks legally qualifies as

parody, it is abundantly clear that Radiance used “NAACP” in

conjunction      with   “National     Association     for    the    Abortion    of

Colored People” to comment upon and criticize the NAACP for its

perceived position on abortion and other issues affecting the

African American community. “The National Association for the

Abortion of Colored People has no moral ground to stand upon,”

the article goes, “just quick sand oozing with the blood of

those most discriminated against. The NAACP’s covert and overt

support of Planned Parenthood negates any other human rights

they purport to defend.” J.A. 870. It is difficult to imagine

what the article is if not criticism. We cannot say, and the



      *
       Radiance does not assert that the use was descriptive fair
use, nor did the district court comment upon a descriptive
theory. We thus do not consider any argument that the use here
was descriptive and fair.


                                        33
district      court      erred      in   holding,       that     Radiance’s        use      of   the

NAACP’s famous marks was not a fair use.

                                                C.

       The final exclusion protects “[a]ny noncommercial use of a

mark.”       15     U.S.C.     § 1125(c)(3)(C).            The    term        “noncommercial”

refers       to    the      First    Amendment        commercial         speech        doctrine.

Lamparello         v.    Falwell,        420   F.3d     309,     313    (4th      Cir.      2005).

Commercial speech is “‘speech that does no more than propose a

commercial transaction.’” Harris v. Quinn, 134 S. Ct. 2618, 2639

(2014) (quoting United States v. United Foods, Inc., 533 U.S.

405,   409        (2001));    see    also      Greater      Balt.      Ctr.      for   Pregnancy

Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 284 (4th Cir.

2013) (en banc). In determining whether speech is commercial, we

consider          several     factors:         (1)    whether        the        speech      is   an

advertisement; (2) whether speech refers to specific products or

services; (3) whether the speaker has an economic motivation for

the speech; and (4)”the viewpoint of the listener,” i.e. whether

the    listener          would      perceive         the    speech         as     proposing       a

transaction. Greater Balt., 721 F.3d at 285-86. The factors are

cumulative, but, again, the absence of any particular element

does not necessarily render the speech noncommercial. Id.

       The    district        court      held    that      because      Radiance         “offered

various opportunities for visitors . . . to donate to Radiance,

pay    to    sponsor      billboards,          secure      license     content,        or    erect

                                                34
state-specific webpages for a fee,” the use of the NAACP’s marks

was commercial. Radiance Found., 25 F. Supp. 3d at 899. We think

however, that the above factors mitigate against a finding of

commerciality.        The    article       in        contention       was     not     an

advertisement.   Nowhere      in    the    piece      did   it    offer     the   reader

anything for sale. The article did not even mention Radiance’s

services. The only point “Radiance” even appeared in the article

was as part of a passing reference to conservatives that the

NAACP purportedly targets. The fact that the websites provided

opportunities    to     engage     in   financial       transactions         does    not

demonstrate that the article itself was commercial. The key here

is the viewpoint of a reasonable reader. A person navigating to

the article, even if through a Google search for “NAACP,” is

highly unlikely to read the article as advertising a Radiance

service or proposing a transaction of any kind.

     Trademark law in general and dilution in particular are not

proper vehicles for combatting speech with which one does not

agree. Trademarks do not give their holders under the rubric of

dilution the rights to stymie criticism. Criticism of large and

powerful   entities     in   particular         is    vital      to   the   democratic

function. Under appellee’s view, many social commentators and

websites would find themselves victims of litigation aimed at

silencing or altering their message, because, as noted, “it is

often virtually impossible to refer to a particular product for

                                          35
purposes of comparison, criticism, point of reference or any

other such purpose without using the mark.” New Kids on the

Block v. News Am. Publ’g, Inc., 971 F.2d 302, 306 (9th Cir.

1992). The article in this case was harsh. But that did not

forfeit     its    author’s    First    Amendment          liberties.     The   most

scathing speech and the most disputable commentary are also the

ones most likely to draw their intended targets’ ire and thereby

attract Lanham Act litigation. It is for this reason that law

does not leave such speech without protection.

                                        V.

     In sum, and for the aforementioned reasons, the plaintiff’s

expression    in    no   way   infringed      upon    or    diluted     defendant’s

trademark     rights.     We   hereby        vacate   the      district     court’s

injunction    and    remand    with    directions      that     the     defendant’s

Lanham Act counterclaims be dismissed.

                                                            VACATED AND REMANDED




                                        36
