Trademark Law | Expert Legal Commentary

September 3, 2008

Burck v. Mars: The Naked Cowboy Shall Ride On

Burck v. Mars, Inc.

By Jeff Zuber of Zuber Lawler & Del Duca and D. Dennis La

Burck v. Mars: The Naked Cowboy Shall Ride On

Robert Burck, a.k.a. The Naked Cowboy, an iconic street performer in Times Square, had the foresight to trademark his name and image. When the Mars company developed an ad campaign depicting its famous M&M candies in and around New York City, they chose to dress up one of the candies as The Naked Cowboy, although they failed to seek or obtain his permission first. Burck sued for trademark infringement, claiming false endorsement; Mars claimed fair use as a parody. Even though that big blue M&M looked nothing like Robert Burck, the M&M’s outfit, setting, and potential for consumer confusion was enough. On motions to dismiss, a federal court in New York decided that Burck’s false endorsement claims could proceed to the factfinder, as could Mars’ defense of parody. Burck v. Mars, Inc., ___ F. Supp. 2d ___, 2008 WL 2485524, No. 08 Civ. 1330 (DC), (S.D.N.Y. 2008).


For ten years, plaintiff Robert Burck has been better known as “The Naked Cowboy,” a street performer in New York City’s Times Square identified by his attire… or lack thereof: a white cowboy hat, cowboy boots, white underpants and an acoustic guitar emblazoned with “The Naked Cowboy.” The Naked Cowboy has reached iconic status in New York City – he has become a tourist attraction and has made appearances in numerous films and tv shows.

Burck registered trademarks relating to The Naked Cowboy’s name and likeness, and has licensed that name and likeness to companies for endorsements and advertisements.

Defendant Mars is the famous candy company that makes, among other products, M&M’s. Mars and its advertising agency created electronic billboards in Times Square and a related mural for its M&M World store in Times Square. In both the billboards and the mural, M&M candies were pictured in an M&M version of New York City – as the Statue of Liberty, riding a carriage in Central Park, as King Kong climbing the Empire State Building, and yes… as the Naked Cowboy. Specifically, a blue M&M was depicted wearing a white cowboy hat, cowboy boots, white underwear and carrying a guitar, standing in front of a backdrop that looked a lot like Times Square. It was undisputed that Mars did not request or receive Burck’s permission related to the billboards or mural.

Burck filed suit against Mars in February 2008, alleging two causes of action: 1) violation of New York State’s right of privacy/ right of publicity law (N.Y. Civil Rights Law section 51), and 2) trademark infringement under section 1125(a) of the Lanham Act, 15 USC section 1125(a).

The defendants filed motions to dismiss and Burck filed a motion to strike some of the defendants’ asserted affirmative defenses, namely fair use, the First Amendment and parody. On June 23, 2008, the district court for the Southern District of New York denied Burck’s motion and denied in part/ granted in part the defendants’ motion. Ultimately, the court determined that Burck’s trademark infringement claim may proceed as alleged. Burck v. Mars, Inc., ___ F. Supp. 2d ___, 2008 WL 2485524, No. 08 Civ. 1330 (DC), (S.D.N.Y. 2008).

Mars did not violate Burck’s right to privacy/publicity

The district court first considered whether the defendants had violated Burck’s right to privacy/ publicity under New York State law; the court determined that they had not.

“In order to maintain an action under [N.Y. Civil Rights Law] section 51, a plaintiff must show that the defendant (1) used his name, portrait, picture, or voice, (2) for advertising or trade purposes, (3) without his written consent.” 2008 WL 2485524, *3.

In this case, the second and third elements were not in dispute – the only question was whether Mars actually used Burck’s portrait or picture, which could include “any recognizable likeness” of Burck and “any representation” of him. 2008 WL 2485524, *4 (citing Allen v. Nat’l Video, 610 F. Supp. 612, 622 (SDNY 1985), and Young v. Greneker Studios Inc., 175 Misc. 1027, 1028 (N.Y. Sup. Ct. 1941)). At the same time, however, a use that merely evokes certain aspects of another’s personality or suggests certain characteristics of another without literally using their picture or portrait is not actionable under the New York statute. 2008 WL 2485524, *4.

The court determined that Mars did not violated the statute for reasons. First, the M&M cowboy is clearly not a portrait or picture of Burck himself. 2008 WL 2485524, *5. Second, Mars only evoked certain aspects of a character played by Burck and copied that character’s costume, which does not constitute actionable conduct. Id. The court specifically stated “the statutory right to privacy does not extend to fictitious characters adopted or created by celebrities.” Id.

The court likened the case to White v. Samsung Elecs. Am. Inc., 971 F.2d 1395 (9th Cir. 1992), in which Vanna White sued an electronics company for creating a robot that looked and acted like her. The White court rejected White’s statutory right to privacy claim, stating that the “caricature or impressionistic resemblance” was not a “likeness” within the meaning of the statute. Id. at 1397.

Burck argued that his “public persona” was the same thing as his portrait or picture under the statute, but the court rejected that argument, stating: “Here, there was no attempt to create a portrait or picture of Burck himself. Rather, the purportedly infringing images were M&M characters wearing Burck’s signature outfit.” 2008 WL 2485524, *7.

Mars’ images may violate the Lanham Act

Even as the court rejected Burck’s right to privacy/publicity claim, it stated that this type of claim – copying a trademarked look – is more appropriately brought as a Lanham Act violation.

Specifically, Burck claimed that Mars’ use of his trademarked image falsely suggested that Burck endorsed M&Ms; the court agreed that this was a real possibility. The elements of false endorsement under the Lanham Act are that the defendant: (1) in commerce, (2) made a false or misleading representation of fact, (3) in connection with goods or services, (4) that is likely to cause consumer confusion as to the origin, sponsorship, or approval of the goods or services. 2008 WL 2485524, *7. (citations omitted). Again, the first three elements were undisputed – the real question was the likelihood of consumer confusion.

Mars contended that its images were mere parodies of Burck, which could not cause consumer confusion. The court noted that a claim of parody had dual uses in trademark infringement cases – to negate the fourth element of the cause of action, and as an affirmative defense of fair use. 2008 WL 2485524, *7 - 8.

Mars claimed that its images “conjure[d] up just enough of Burck’s trademark” for consumers to get the obvious joke. But the court held that whether or not consumers would see the M&M images as a parody or not is a question of fact for the ultimate trier of fact to decide, not a question of law to be adjudged on a dispositive motion. 2008 WL 2485524, *8.  The court pointed out that some consumers may get the alleged joke, while others may mistakenly believe that Burck had endorsed the images because of their commercial setting. Id. The factfinder must determine whether the claimed parody was strong enough to negate the potential for consumer confusion. Id. As a result, the court allowed Burck’s false endorsement claim to go forward.

The parody, fair use and First Amendment defenses remain

Burck moved to strike these affirmative defenses on two grounds: 1) the video and the mural were not parodies at all, and 2) even if they were parodies, that defense does not apply to parodies that advertise a product. 2008 WL 2485524, *9.  As to the first defense, the court reiterated its finding that whether or not the images constitute successful parodies is a question of fact, not one that should be resolved in an early dispositive motion.

As to the second claim, the court acknowledged that while the parody defense does not apply to strictly commercial uses, many such uses are “hybrid” uses – part artistic expression and part commercial promotion. 2008 WL 2485524, *9. In such cases, the Second Circuit had developed a balancing test: “trademark protection is afforded ‘only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.’” 2008 WL 2485524, *10. (citing Rogers v. Grimaldi, 875 F.2d 994, 999 (2nd Cir. 1989).

Here, Mars contended that its billboards and mural were artistic/commercial hybrids. The court agreed, finding sufficient evidence to allow defendants to plead the defense of parody and its related defenses of fair use and First Amendment. 2008 WL 2485524, *10.

About the Author

Jeff Zuber is a Partner of Zuber Lawler & Del Duca, focusing on intellectual property litigation and arbitration.

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Companies Mentioned

Chute Gerdeman, Inc.

Mars, Inc.

Also See:

Brown v. Electronic Arts, Inc.: Lanham Act Protects Video Games, not Athletes

Already, LLC v. Nike, Inc.: Supreme Court Affirms that Covenant Not to Sue Can Moot Trademark Case

Louboutin v. Yves Saint Laurent: Second Circuit Upholds Trademark Protection for Red-Soled Shoes

Louis Vuitton Malletier S.A., v. Ly USA: Second Circuit Splits, Allows Attorney’s Fees Under § 1117(c) Trademark Infringement

Chloé v. Queen Bee: Exercising Personal Jurisdiction for Infringement in Internet Transactions

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Companies Mentioned

Trademark Law

The following companies are mentioned in Trademark Law Updates:

Louis Vuitton Malletier S.A.

Tiffany (NJ) Inc.

Tiffany & Co.

eBay, Inc.

International Trademark Association

Haute Diggity Dog, LLC

JA Apparel Corp.

Houndstooth Corp.

Harringbone Creative Services, Inc.

Mars, Inc.

Chute Gerdeman, Inc.

Take-Two Interactive Software, Inc.

Rockstar Games, Inc. d.b.a. Play Pen

Volkswagen of America, Inc.

Shokan Coachworks, Inc.

Audi AG

University of Southern California

University of Oklahoma

Smack Apparel Company

Ohio State University

Louisiana State University

Collegiate Licensing Company

NTU Electronics, Inc.

Trademark Trial and Appeal Board

Midway Services, Inc.

MDCO, Inc.

Custom Manufacturing and Engineering, Inc.

Automated Engineering Corp.

Internet Specialties West, Inc.

Woofies, LLC d.b.a. Woofie’s Pet Boutique

Ace-Web Internet

Sysco Corp.

The Craig Allen Company, LLC

Rescuecom Corp.

Payless Shoesource, Inc.

John Allan Company

Google, Inc.

Adidas-Salomon AG

Hansen Energy and Environmental, LLC

Bose Corp.

Adidas America, Inc.

Ly U.S.A., Inc.

Field Sanitation Solutions, Inc.

Wham-O, Inc.

Venture Tape Corp.

Coco U.S.A. Inc.

Faith Unlimited, Inc.

Manley Toys, Ltd.

McGills Glass Warehouse

Marco Leather Goods, Ltd.

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