First posted June 24, 2008.
From the National Post, trademark news about a lawsuit brought by New York’s charming Naked Cowboy against the makers of M&M’s and its ad agency. The story is in Canadian, but you can still more or less make it out:
Robert Burck, a New York street performer who entertains the crows in Times Square by strumming a white guitar and wearing little more than white cowboy boots, has been given a green light to proceed with a US$6-million trademark suit against the maker of M&Ms candy.
Burck, who has trademarked [sic] his look and who licences his name and likeness for endorsements, claims Mars ran video billboards that improperly depicted an M&M wearing an outfit similar in skimpiness to that favoured by the cowboy.
Mars denies the allegations and tried to get the case thrown out of court. Mr. Justice Denny Chin of the U.S. District Court for the Southern District of New York in Manhattan refused, ruling that whether Mars infringed the trademark is a question of fact, not law, and as such can only be decided at trial. You can read his judgment here.
Judge Chin’s opinion (which I assume reflects “his judgment”) actually has the relevant pictures right in it. I like that kind of thing. The lawsuit also included a claim for infringement of Burck’s right of publicity, as it would be called elsewhere, or what New York calls the (statutory) right of privacy. It was dismissed. From the opinion:
Burck’s right to privacy claim (denominated as a right of publicity claim) is dismissed, for the New York statute [N.Y. Civ. Rights Law § 50] protects the name, portrait, or picture of a “living person,” not a character created or a role performed by a living person. Burck may proceed, however, with his false endorsement claim, for he plausibly alleges that consumers seeing defendants’ advertisements would conclude — incorrectly — that he had endorsed M&M candy.
The court ruled that the right of privacy statute in New York is narrowly tailored to protect actual depictions of people — not their transmogrification into candy-coated chocolates. “The M&M Cowboy characters are not portraits or pictures of Burck, and thus defendants did not use a portrait or picture of Burck. . . . Merely evoking certain aspects of another’s character or role does not violate sections 50 and 51.”
Okay, so what kind of “endorsement” does Judge Chin think is plausible enough to go to the jury here?
The video (an animated cartoon) featured “a blue [naturally — RDC] ‘M&M’ dressed up exactly like The Naked Cowboy — white underwear, white cowboy hat, white cowboy boots, and white guitar.” In addition to the M&M Cowboy character, the video showed other M&Ms as famous New York figures, such as the Statue of Liberty and King Kong, as well as everyday New Yorkers and tourists engaging in typical New York activities such as hailing a cab and riding a carriage through Central Park.
Unfortunately for Mars (not the god of war — the maker of M&M’s) and codefendant Chute Gerdeman, Inc. (the ad agency), they are reduced to defending this depiction of the Naked Cowboy as a “parody.” That is usually the end of the game (not always, but usually), and it was here, at least at the summary judgment level. Mars is lucky Judge Chin didn’t actually rule on the question as a matter of law, considering that parody hardly seems plausible here, though Burck urged him to do so in a motion to strike parody as an affirmative defense. Whether or not the naked M was a parody was a fact question, according to the opinion. Thankfully, Judge Chin rejected the suggestion by plaintiff Burck that a commercial use of a trademark can never be a parody.
This case will settle, in all probability. It is hard to understand, however, how any rational fact finder could consider this use of the “concept” of the Naked Cowboy, and what he does, to cause likelihood of confusion here, as opposed to merely alluding to it, having fun with it — an homage. Again, we ask: Is a mere reference to a cultural phenomenon likely to make the average viewer think that phenomenon is the origin, sponsors, or “approver” of the referencer?
Would it make you think that?
In his latest lawsuit, Burck alleged that CBS infringed his trademark and damaged his brand in the amount of $1.5 million when the soap opera The Bold and the Beautiful featured a character named Oliver, who also played guitar wearing only briefs and a cowboy hat. After the episode aired, CBS featured a clip on its YouTube channel with the title, “The Bold and the Beautiful — Naked Cowboy,” and purchased targeted adword advertising using the term “naked cowboy.”
In dismissing the case, Judge Barbara Jones was quick to point out that the mark never appeared anywhere during the show. While the network did use the mark in the YouTube clip’s title, the judge determined that this did not constitute “use in commerce,” as is required to sustain a trademark infringement claim.
“It is clear that CBS used the phrase in an effort to describe the contents of the video clip, not as a mark to identify the source of the video clips,” she wrote.
Jones also specifically noted that the costume used in the soap opera contained “none of the distinctive characteristics of the Naked Cowboy costume,” which included the use of his name, the word “tips,” and the $ symbol on his signature briefs.
More analysis from Rebecca Tushnet.