Walmart T-shirts and The Right to Criticize

Ran across an article on IP Frontline discussing Wal-Mart's cease and desist campaign against a computer store owner named Charles Smith. Smith has created T-shirts criticising Walmart that read: "I (heart) WAL*OCAUST. They have family values and their alcohol, tobacco and firearms are 20% off". Walmart said that it was required to protect its trademark. I guess they are going under the theory of tarnishment - (the article didn't specify).

In order to bring a trademark tarnishment cause of action, the owner must first show dilution of their mark under federal law. The threshold question in showing dilution is whether the mark is a "famous mark". To determine whether a mark is famous, a court will consider the following factors: "(1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered 15 U.S.C. § 1125(c) that a trademark owner may take against a person using their mark" (from Overview of Trademark Law). The Harvard site lists Kodak, Xerox and Exxon as famous marks. It is almost obvious that Walmart is a famous mark as well. It is distinctive as a large retailer with low prices that has been in use for over 30 years. Geographically, the Walmart empire has been dominating the American landscape (a likely inspiration for Mr. Smith's t-shirt), and has received much publicity and criticism as a destroyer of American Main Street USA. It is widely recognized as a retail giant among others such as Target and K-Mart (a similar mark w/the use of a "Mart" conjunction), and it is registered under section 1125(c). Therefore Walmart is a famous mark.

Since the pre-requisites of dilution are met, Walmart can now bring an action against any use of the mark that dilutes the distinctive quality of it by either blurring or tarnishment. Blurring is not really an issue here, but tarnishment is the more likely candidate. Tarnishment occurs when the mark is cast in an unflattering light, usually connected with "inferior or unseemly products or services," (see Toys "R" Us v. Akkaoui ), and the inference is that the plaintiff's mark will suffer from the negative association.


The defenses to a tarnishment claim could include fair use, nominative use or parody. In a case such as this it is likely that a parody defense would be raised, along with the free speech concerns the defedant will promote as needing protection. Parodies of trademarks may be protected if they are not too closely tied to commercial use. Courts have applied the parody doctrine in different ways. Some of them look at the likelihood of confusion, while others balance the likelihood of confusion with the First Amendment added on to the Polaroid factors. Other courts find that First Amendment law trumps trademark law, but generally the trend has been to evaluate the parody - and courts tend to be more sympathetic to parodies w/o a commercial aim. So, as I have blogged about before, High Society magazine's pornographic parody of the L.L. Bean catalogue was found permissible, while posters with the Coca-cola ad altered to say "Enjoy Cocaine" were found to violate Coke's rights. I think that Mr. Smith's T-shirts are likely to be compared to the L.L. Bean parody, b/c they are an original work that only calls up the image of Walmart (by the use of the word "Wal*ocaust") to criticize social ills that Mr. Smith would like to address. Also the practice of Wal*obashing (please don't sue me too!) is a common one in America (as evidenced by the many books and articles written on the subject - see link above).

The only problem that I have with my analysis above is that for federal trademark infringement likelihood of confusion is not a necessary test. It seems to me then that the majority of courts that factor First Amendment into a likelihood of confusion analysis for a parody/dilution action are using the wrong kind of logic. Is there another doctrine for dilution cases rather than pulling out the First Amendment trump card? Is it dangerous to so?