The Naked Cowboy’s Trademark Suit Against M&M Must Proceed to Trial, NY District Court Rules

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,”…

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