Web site and artistic designs created by Georgia resident Charles Smith to express his objections to Wal-Mart’s business practices are not only permissible under trademark law but are speech that should be protected by the First Amendment, Public Citizen said in a lawsuit filed in a Georgia federal District Court in Atlanta.
Smith, a Conyers resident, created designs critical of Wal-Mart that merged Wal-Mart’s name with the word “holocaust” and a star, and arranged for CafePress.com, a California company, to put the design on T-shirts, hats, bumper stickers and other items for salethat he sold on the Internet. Smith reserved the domain name and arranged for his items to be sold on CafePress.com.
In December 2005, Wal-Mart sent a letter and e-mail to Smith asserting ownership of trademarks in the name Wal-Mart, the star and the “smiley face” the company uses. The company threatened to sue Smith for infringing and diluting its trademarks and demanded he stop selling his items. Wal-Mart also demanded that Smith stop using the domain name “walocaust.com” and transfer it to Wal-Mart. Wal-Mart made a similar threat to CafePress.com, which immediately stopped making and selling Smith’s items.
In the lawsuit, Public Citizen asserts although Smith sold his anti-Wal-Mart merchandise, the designs themselves are non-commercial speech — a type of speech currently protected from trademark infringement and dilution lawsuits. The lawsuit also states that there is no likelihood of confusion about whether Smith’s designs or Web site are sponsored or affiliated by the retail giant, a common trademark violation claim. The lawsuit requests the court to rule that Smith is not infringing, diluting or cybersquatting on Wal-Mart’s trademarks because his speech is protected by the First Amendment.
The district court granted summary judgment for Smith on all claims, finding that his designs were parodies that did not create any likelihood of confusion or dilution of Wal-Mart’s trademarks even though Wal-Mart produced a consumer survey from one of the most well-known trademark expert witness that purported to show evidence of a shocking level of confusion. The district court refused to award attorney fees for Smith under either the Georgia anti-SLAPP statute or the Lanham Act.