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Dilution 251
“WALMART,” “WAL-MART,” and “WAL★MART” and its word mark “ALWAYS
LOW PRICES. ALWAYS.” would be confused with Smith’s “WALOCAUST,” “WAL-
QAEDA,” “FREEDOM HATER MART,” or “BENTON★VILLEBULLIES ALWAYS”
concepts. In so finding, the Court concludes that factors three (similarity of the marks),
five (similarity of sales methods) and six (similarity of advertising methods), weigh in
Smith’s favor, with particular emphasis on how different the appearance and usage of the
marks were and how vastly the parties’ advertising methods differed. The Court concludes
that factors one (actual confusion), two (strength of the mark), four (similarity of product)
and seven (Smith’s intent) favor neither party.
In sum, the Court is convinced that no fair-minded jury could find that a reasonable
consumer is likely to be confused by the challenged marks. As a result, the Court
GRANTS summary judgment to Smith on Wal-Mart’s claims of trademark infringement,
unfair business competition, cybersquatting and deceptive trade practices.
D. Trademark Dilution by Tarnishment
Wal-Mart contends that Smith’s Walocaust and Wal-Qaeda concepts, by associating
Wal-Mart with “the perpetrators of such atrocities as the Holocaust and the attacks of
September 11, 2001, unquestionably tarnish the Wal-Mart marks.” Dilution by tarnishment
recognizes an injury when a “trademark is . . . portrayed in an unwholesome or unsavory
context likely to evoke unflattering thoughts about the owner’s product.” Deere & Co. v.
MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994); accord Original Appalachian Artworks,
Inc. v. Topps Chewing Gum, Inc., 642 F.Supp. 1031, 1039 (N.D. Ga. 1986).
“However, tarnishment caused merely by an editorial or artistic parody which
satirizes [the complainant’s] product or its image is not actionable under an anti-dilution
statute because of the free speech protections of the First Amendment.” Mattel, Inc. v.
Walking Mountain Prods., 353 F.3d 792, 812 (9th Cir. 2003) (citation and internal,
punctuation omitted). “Parody is a form of noncommercial expression if it does more than
propose a commercial transaction.” Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 66–
67 (1983).
A claim of dilution applies only to purely commercial speech. Mattel, 353 F.3d at
812. See also Bolger, 463 U.S. at 66–67 (finding that materials do not become
“commercial speech” simply because the author had economic motivation to create
them). “The question whether an economic motive existed is more than a question
whether there was an economic incentive for the speaker to make the speech; the Bolger
test also requires that the speaker acted substantially out of economic motivation.”
Procter & Gamble Co. v. Amway Corp., 242 F.3d 539, 552–53 (5th Cir. 2001) (emphasis
supplied). “Thus, for example, speech that is principally based on religious or political
convictions, but which may also benefit the speaker economically, would fall short of
the requirement that the speech was economically motivated” and therefore would be
considered noncommercial. Id.
At least one court of appeals has specifically addressed whether a social advocate
selling t-shirts that carried the group’s social message was engaging in noncommercial
speech, despite the fact that the group sold the t-shirts to the public for profit. See Ayres
v. City of Chicago, 125 F.3d 1010 (7th Cir. 1997). In Ayres, the court distinguished
limitations on “the sale of goods that are not themselves forms of protected speech,”
noting that precedent allows more restriction on sales of nonexpressive goods than it
does on goods that are forms of protected speech. Id. at 1015. The court likened t-shirts
carrying messages of social advocacy to “the sandwich boards that union pickets
sometimes wear.” Id. at 1014. As such, the t-shirts were “a medium of expression prima