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The Naked Cowboy’s Trademark Suit Against M&M Must Proceed to Trial, NY District Court Rules
Robert Burck v. Mars, Inc., et al.
08 Civ. 1330 (DC), U.S. District Court for the Southern District of New York, 06/23/2008
Companies Mentioned: Chute Gerdeman, Inc., Mars, Inc.
Holding
The trademark infringement suit of The Naked Cowboy, the half-naked street entertainer who performs in New York City’s Times Square, against the M&M candy-maker should proceed to trial, so ruled the U.S. District Court for the Southern District of New York. The candy company and its ad agency ran an animated cartoon advertisement on two oversized video billboards in Times Square, featuring a blue M&M dressed exactly like the guitar-playing The Naked Cowboy. But they justified their promotional campaign as a mere parody that was not likely to cause confusion. The district court however rejected such argument of defendants, stating that whether the M&M Cowboy characters were parodies of The Naked Cowboy raised factual questions that were not for the court to decide in a motion to dismiss. Further, the district court also rejected defendants’ argument that some consumers might view the M&M Cowboy characters as a part of a larger work depicting New York scenes and parodying famous New York characters. The district court reasoned that other consumers might mistakenly believe that The Naked Cowboy himself endorsed the copying of his "trademarked likeness" because the M&M Cowboy characters appear in a commercial setting (i.e., on the video billboard and inside the M&M World store). The district court accordingly denied the defendants’ motion to dismiss the trademark infringement suit.
Detailed Summary
Plaintiff Robert Burck is a “street entertainer” who performs in New York City’s Times Square as The Naked Cowboy, wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar strategically placed to give the illusion of nudity. Opinion, p. 3, citing Complaint, paragraphs 5-6. He has registered trademarks to “The Naked Cowboy” name and likeness. Id., citing Complaint, paragraphs 20-21. Starting in April 2007, defendants Mars, Incorporated ("Mars") and Chute Gerdeman, Inc. ("Chute") began running an animated cartoon advertisement on two oversized video billboards in Times Square, featuring a blue M&M dressed “exactly like The Naked Cowboy,” wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar. Id., p. 4, citing Complaint, p. 26.
Mars sells candies and chocolate products, including the world-famous M&M’s. Id., citing Complaint, paragraph 33. Mars retained Chute, an advertising and design agency, to create a video for two electronic billboards in Times Square and a mural for its M&M World store located in Times Square. Id., citing Complaint, paragraph 32-33.
In this case, plaintiff Burck sued defendants for compensatory and punitive damages. He alleged that defendants violated his “right to publicity” under New York law and infringed his trademarks under federal law by using his likeness, persona, and image for commercial purposes without his written permission and by falsely suggesting that he had endorsed M&M candy.
The following motions were brought for resolution before district court: Chute’s motion pursuant to Fed. R. Civ. P. 12(b)(6) to dismiss the complaint; and Burck’s motion pursuant to Fed. R. Civ. P. 12(f) to strike certain of defendants’ affirmative defenses.
Going first to defendants’ motion to dismiss plaintiff Burck’s right of privacy claim, the district court ruled in favor of defendants for two reasons. First, defendants did not use an actual photograph or picture of Burck himself, nor did they use a recognizable likeness or representation of him. Opinion, p. 11, citing Allen v. National Video, Inc., 610 F. Supp. at 622. Obviously, no viewer would have thought that the M&M Cowboy characters were actually Burck or were intended to be him. Id., citing Onassis v. Christian Dior-New York, Inc., 122 Misc. 2d 603 at 611 (N.Y. Sup. Ct. 1984).
Second, while defendants did evoke certain aspects of the character created by Burck, including copying The Naked Cowboy’s costume, these actions were not prohibited by sections 50 and 51 of the New York Civil Rights Law. Merely evoking certain aspects of another’s character or role does not violate sections 50 and 51. Id., citing Allen, 610 F. Supp. at 623.
As part of its reasoning in granting defendants’ motion to dismiss plaintiff Burck’s right of privacy claim, the district court added that case law supports the conclusion that the M&M Cowboy characters depicted in the video and mural were merely personifications that do not fall within the literal meaning of “portrait” or “picture” of a person. Id., p. 12, citing White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992). 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. The images were not portraits or pictures of Burck as The Naked Cowboy, but of M&Ms dressed as The Naked Cowboy. Thus, defendants did not violate sections 50 and 51 of the New York Civil Rights Law, and accordingly, the district court granted defendants’ motion to dismiss Burck’s right of privacy claim.
With respect to defendants’ motion to dismiss Burck’s Lanham Act claim, the district court ruled in favor of plaintiff Burck, and accordingly denied defendants’ motion to dismiss such claim. According to the district court, defendants did not dispute that Burck was able to demonstrate the first three elements of a false endorsement claim (i.e., defendant (1) is in commerce; (2) made a false or misleading representation of fact (3) in connection with goods or services).
Instead, defendants argued in their motion to dismiss Burck’s Lanham Act claim or trademark infringement claim that the allegations in the complaint failed to establish the likelihood of confusion because the video and mural were merely parodies of The Naked Cowboy and no one would confuse these parodies for an endorsement.
In response to these arguments of defendants, the district court held that whether the M&M Cowboy characters were parodies of The Naked Cowboy raised factual questions that were not for the court to decide at this stage of the litigation. The district court also rejected defendants’ argument that some consumers might view the M&M Cowboy characters as a part of a larger work depicting New York scenes and parodying famous New York characters. The district court reasoned that other consumers might mistakenly believe that The Naked Cowboy himself endorsed the copying of his “trademarked likeness” because the M&M Cowboy characters appear in a commercial setting (i.e., on the video billboard and inside the M&M World store). Moreover, even assuming that the M&M Cowboy characters were parodies, a fact-finder may nevertheless conclude that the parodies were too weak to negate the potential for consumer confusion. Opinion, pp. 18-19, citing Schieffelin & Co. v. Jack Co. of Boca, Inc., 725 F. Supp. 1314, 1324 (S.D.N.Y. 1989).
On a motion to dismiss, a court must accept the factual allegations in the complaint and may consider only whether the pleading plausibly states a claim for relief. Id., p. 19, citing Iqbal v. Hasty, 490 F.3d 143, 157-58 (2d Cir. 2007). Here, the complaint alleged that the M&M Cowboy characters, dressed just like The Naked Cowboy, “implied, falsely, that Burck’s character, The Naked Cowboy, endorse(d) the M&M product.” Id., citing Complaint, paragraph 41. The complaint plausibly argued that consumers would believe that the M&M Cowboy characters were promoting a product rather than merely parodying The Naked Cowboy, and that viewers would believe that The Naked Cowboy had endorsed M&Ms. Hence, the complaint alleged sufficient facts to support a false endorsement claim. Accordingly, the district court denied defendants’ motion to dismiss plaintiff Burck trademark infringement claim (Lanham Act claim).
With respect to plaintiff Burck’s motion to strike the parody, fair use, and First Amendment defenses, the district court ruled in favor of defendants, and denied plaintiff Burck’s motion to strike such defenses. In his motion, Burck argued that the video and mural were not parodies at all, and thus not entitled to protection as fair use under the First Amendment. In response to these arguments of plaintiff Burck, however, the district court wrote that whether the M&M Cowboy characters were parodying The Naked Cowboy was a factual issue that could not be decided on a motion to dismiss or a motion to strike affirmative defenses.
As part of its reasoning in denying plaintiff Burck’s motion to strike affirmative defenses, the district court further took into account the defendants’ argument that the video and mural featuring the M&M Cowboy characters were commercial in part and artistic in part. Id., p. 22, citing Transcript of Proceedings of June 11, 2008 at 5-6. Indeed, the district court found the commercial aspect of the video and mural to be subtle. In particular, the video and the mural did not advertise or describe the product itself—while the entertainment aspect was obvious. The animated M&M candies depicted various scenes in New York that, defendants argued, “convey a humorous message” to encourage “consumers (to) see the humor in familiar New York characters and experiences.” Id., p. 22, citing Def. Opp. at 19. Because a parody may be “of a hybrid nature, combining artistic expression and commercial promotion,” it is valid to plead a parody defense even where the parody is used in part for advertising purposes. Id., p. 23, citing N.Y. Stock Exch., Inc. v. N.Y., N.Y. Hotel, LLC, 292 F.3d 550, 555-56 (2d Cir. 2002). Accordingly, the district court denied plaintiff Burck’s motion to strike the foregoing affirmative defenses.
On the basis of the foregoing, the district court granted defendant Chute’s and defendant Mars’ motion for judgment on the pleading or motion to dismiss with respect to Burck’s right of privacy claim, but denied such motions with respect to Burck’s trademark infringement claim. It also denied plaintiff Burck’s motion to strike defendants’ affirmative defenses.
View a PDF of the judicial opinion.Law Commentary
Read the related Law commentary: Burck v. Mars: The Naked Cowboy Shall Ride On, by D. Dennis La, Esq.
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