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252 FALSE ADVERTISING, DILUTION & ‘CYBERPIRACY’
facie protected by the free-speech clause of the First Amendment, and they do not lose
their protection by being sold rather than given away.” Id. (citing Heffron v. Int’l Soc’y
for Krishna Consciousness, Inc., 452 U.S. 640 (1981)).
The Court is convinced that a reasonable juror could only find that Smith primarily
intended to express himself with his Walocaust and Wal-Qaeda concepts and that
commercial success was a secondary motive at most. Smith has strongly adverse
opinions about Wal-Mart; he believes that it has a destructive effect on communities,
treats workers badly and has a damaging influence on the United States as a whole. He
invented the term “Walocaust” to encapsulate his feelings about Wal-Mart, and he created
his Walocaust designs with the intent of calling attention to his beliefs and his cause. He
never expected to have any exclusive rights to the word. He created the term “Wal-
Qaeda” and designs incorporating it with similar expressive intent. The Court has found
those designs to be successful parodies.
Thus, Smith’s parodic work is considered noncommercial speech and therefore not
subject to Wal-Mart’s trademark dilution claims, despite the fact that Smith sold the designs
to the public on t-shirts and other novelty merchandise. Consequently, Smith’s motion for
summary judgment on Wal-Mart’s trademark dilution claims is hereby GRANTED.
III. Conclusion
Smith’s motion for summary judgment is hereby GRANTED, and Wal-Mart’s motion
for summary judgment is DENIED. The Court hereby issues a declaratory judgment that
Smith’s activities have not violated any of Wal-Mart’s trademark rights. Smith may maintain
his domain names and websites. He may also resume offering for sale via his Walocaust and
Wal-Qaeda CafePress webstores his parodic WALOCAUST, WAL-QAEDA, FREEDOM
HATER MART, and BENTON★VILLEBULLIES ALWAYS concepts printed on novelty
merchandise; on any webpage or other channel offering such merchandise for sale, Smith
must continue to include prominent disclaimers of affiliation with Wal-Mart.
Questions:
1.) Commercial/Noncommercial Use v. Use in Commerce: We have said repeatedly that
the “commercial/non commercial” line is one way that courts and legislatures seek to
trim the ambit of intellectual property rights, to fine tune them so that they are neither
under nor over inclusive. So far, we have looked at two definitions of “use in
commerce”—one in the context of the use required to obtain a mark and one in the
context of the use required to infringe a mark. How is the definition of commercial
speech here in the context of dilution different? Why is it different? [Hint: what would
be the ambit of the ‘non commercial’ defense to dilution if we took a broad definition of
commercial, such as “anything Congress can regulate under the commerce clause?”]
2.) Smith was selling, for profit, T shirts that used portions of Walmart’s logos. Why is
this not commercial? List the reasons the court gives, starting with those you think most
important.
3.) The court draws a distinction between “speech goods”, those that carry a message
though they are distributed for profit, and those that offer no such message. Is this
distinction of relevance in the PETA case? Should it have been?