Wal-Mart v. Smith (Letters) [1]

Summary

Threat Type:

Correspondence

Date:

12/28/2005

Status:

Concluded

Disposition:

Lawsuit Filed

Location:

Georgia

Verdict or Settlement Amount:

N/A

Legal Claims:

Cybersquatting

Trademark Infringement

Trademark Dilution

Unfair Competition

Other

Parties

Party Receiving Legal Threat:

Charles Smith

Type of Party:

Large Organization

Type of Party:

Individual

Location of Party:

Arkansas

Location of Party:

Georgia

Legal Counsel:

Claudia T. Bogdanos, John M. Bowler, Partha P. Chattoraj (in subsequent litigation)

Legal Counsel:

Paul Alan Levy; Margaret Fletcher Garrett, Elizabeth Lyn Littrell, Gerald R. Weber (in subsequent litigation)

Description

On December 28, 2005 and again on February 1, 2006, Wal-Mart sent cease-and-desist letters to Charles Smith and CafePress asserting trademark and unfair competition claims. The letters came after Smith created a website using the domain name www.walocaust.com and started selling nazi-themed "Walocaust" merchandise through his account on Cafepress.com. Smith, a passionate critic of Wal-Mart, created a number of "Walocaust" graphics that parodied Wal-Mart's familiar trademarks and slogans by likening Wal-Mart's business practices to nazism and its effect on communities to the Holocaust. Smith reproduced these graphics on his website and printed them on T-shirts and other novelty merchandise that he sold through Cafepress.

In response to the cease-and-desist letters, CafePress removed all of Smith's Wal-Mart-related merchandise from his online "store." With the help of Public Citizen [2], Smith filed a lawsuit in federal district court in Georgia asking the court for a declaratory judgment that his use of "Walocaust" was lawful. Wal-Mart counterclaimed, asserting various federal and state trademark claims and asking the court for an injunction barring Smith from making any commercial use of the prefix "Wal," for an order awarding it ownership of Smith's Wal-Mart-related domain names, and nominal damages. After the lawsuit commenced, Smith registered the domain names www.wal-qaeda.com and www.walqaeda.com and developed a new series of graphics for CafePress merchandise combining "Wal-Mart" with "Al-Qaeda" and expressing Smith's virulently anti-Wal-Mart views.

In March 2008, the federal district court granted summary judgment to Smith on all counts and dismissed Wal-Mart's counterclaims. The court held that Smith's use of the Wal-Mart trademarks was a parody, and that no reasonable person would confused by Smith's parodic use. The court further ruled that Wal-Mart's trademark dilution claim was barred because Smith's use of the company's trademarks was protected "noncommercial" speech, despite the fact that he placed his graphics on items like T-shirts sold to the public.