Originally posted 2008-06-24 11:29:06. Republished by Blog Post Promoter
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.” Read More…