-Wes Anderson, Attorney
For every serious-minded, informative website out there (I submit for your consideration this august blog) there are countless others that lean more towards the absurd. The website “walmart.horse” is squarely in the latter column. But can something so lighthearted also constitute trademark infringement?
According to Ars Technica, a cartoonist named Jeph Jacques (author of the webcomic Questionable Content) decided to register the website walmart.horse in February 2015. The site is essentially the most basic of Tumblr blogs, and “does what it says on the tin”: you get a picture of a horse layered atop a Walmart storefront, and not much else. Jacques says he registered the domain name along with a variety of other “ridiculous” domain names.
If a website address ending in “.horse” sounds about as plausible as a 555- telephone number, worry not: “.horse” is among a laundry list of new “top-level domains” that have recently been rolled out to supplement the traditional .com, .org, and .net top-level domains (known as the original “generic” top-level domains, or gTLDs).
Jacques styles the website as “postmodern Dadaism.” We’ll be fine with calling it “goofy.” And the long reign of the enigmatic twitter handle “horse ebooks“ suggests there’s something undeniably entertaining about an equine non sequitur. But Wal-Mart Stores, Inc. has styled the website as something else – infringement upon its WALMART trademark.
Wal-Mart purportedly sent a rather generic demand letter to Jacques, which Jacques posted on his own website. The letter utilizes the proverbial kitchen sink of trademark infringement: Wal-Mart claims that walmart.horse “suggests Walmart’s sponsorship or endorsement of your website” and “constitutes trademark infringement and dilution of Walmart’s trademark rights and unfair competition.”
It seems Walmart’s case with respect to confusion as to “sponsorship or endorsement” — a traditional trademark infringement standard under the Lanham Act — is rather weak. Would consumers attribute this website to an avant garde Walmart ad campaign? Possibly, but not “likely,” in my view. And Walmart doesn’t put a great deal of emphasis on this approach either — the letter focuses primarily on “dilution.”
But what is “dilution”? According to the Federal Trademark Dilution Act:
Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
Owners of well-known marks typically turn to dilution where a purported infringer is using a similar mark, but only for unrelated or disparate goods and services. A dilution claim gives famous brand owners a longer reach than they might otherwise have under a traditional “likelihood of confusion” infringement analysis.
Under “dilution by blurring,” the owners of well-known marks typically turn to dilution where a third party is using a mark for goods or services that may be completely different or unrelated to the famous mark’s associated goods and services. Under “dilution by tarnishment,” the third party associates the famous mark with inappropriate or unflattering subject matter.
Walmart’s demand letter accuses Jacques of both forms of dilution: walmart.horse “weakens the ability of the Walmart mark and domain name to identify a single source” and “tarnishes the goodwill and reputation of Walmart’s products, services, and trademarks.
But note the language of the statute: dilution only occurs when the purportedly dilutive mark is used in commerce, which generally refers to the sale of goods and services.
So what is walmart.horse selling? Well, nothing. Some cases have blurred the edges of this definition, but it’s tough sledding to say that Jacques is using a mark “in commerce” and thereby diluting the WALMART mark. And Jacques’ stated intent is to display the site for its own sake as an “obvious parody.” He is also wise enough to utilize public domain images to avoid any copyright infringement concerns. This is indeed parody — or, if you’re feeling adventurous, an art piece. It likely qualifies as nominative fair use, particularly given its noncommercial purpose.
The walmart.horse saga also provides a lesson on the utility of the “form” demand letter, like Walmart’s. While a boilerplate infringement letter does the job in some cases, they can backfire. Artists and creatives are often armed with experience in the bounds of trademark and copyright law. And web-savvy parties may elect to post the form letter online, taking the grievance directly to the court of public opinion. That’s what Jacques did, and the press (armed to the hilt with horse puns) has roundly sided with him. This may be thanks to his creative response to Walmart’s letter, which contained this parting shot:
If you have any requests for other animals you would like to see added to the image on the website, I would happily comply!
We’ll see if Walmart takes up the offer.