In a 23-page opinion, Judge Denny Chin of the Southern District of New York ruled yesterday that confectioner Mars inc. did not violate the right of publicity of well-known Times Square entertainer Robert Burck, AKA the Naked Cowboy.
Mars had run a billboard video of its iconic M&M cartoon character in a variety of NY-centric contexts, including one scene in which the character was “wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar–Burck’s regular get-up.
New York’s publicity law (Sections 50 and 51 of the state’s Civil Rights Code) is among the most stringent in the nation, applying to “any recognizable likeness” of a person used in a commercial context, making the win an especially sweet one for Mars. An M&M in underpants and cowboy hat, said the court, was simply not a depiction of Burck.
The court, however, refused to render summary judgment on the Naked Cowboy’s Lanham Act claim of false endorsement, on the grounds that passers-by might confuse the M&M video for the Cowboy’s (somewhat dubious?) endorsement. (Earlier coverage).
17 Comments
Not “dubious” at all. Mars is well known for using properties that do not belong to them. It’s a common practice by the candy giant and most likely will be conveyed through discovery where convolution can be proven, then the jury will certainly choose a strict and serious punitive determination. I believe that the Naked Cowboy will win his case and the jury will (and very well should) demand a strict punitive penalty for Mars.
The reasoning in the above comment is why law and lawyers have such a wonderful reputation these days. There is simply no point that cannot be argued, no slight not worth the time and money spent to prosecute and defend it, not amount of nonsense courts must endure–though in this case the court is doing a good job of making itself contemptible.
Soooo… can someone explain this one? The court found that the publicity law for “any recognizable likeness” was not violated (i.e., M&M did not use a likeness for the naked cowboy). How can a claim of false endorsement be valid? If he’s not recognizable, he couldn’t be expected to have endorsed (or, at least, no one could recognize who was doing the endorsing)?
Because there is a difference between “people would think the M&M was actually me” and “they used my trademark without my permission.”
How would Mars react if Mr. Burck painted himself blue and pasted “M&M” on his chest?
You have got to be friggin’ kidding me… and then to make it even more ridiculous I find people empathizing with this egomaniac? If anything, Burck should’ve been on his hands and knees kissing Mar’s butts for providing him with whatever fame he could garner from it. No, instead he tries to go for the deep pockets and sue them.
Tell you what Burck… get a real job.
Mr. Burck must protect his image. He has made a good career off of it over the last 10 years. Mars should enter an undisclosed settlement with royalties paid to Mr. Burck and the reintroduction of the M&M character.
I wonder what the appellate court will think of the lower court’s ruling?
Andrew, why are you calling the court’s ruling a Summary Judgment. It was a Motion to Dismiss. Different standards apply.
Have any of you no understanding of the point of Trademark? Do we all understand that this Naked Cowboy “Trades” his likeness and imagery for income? The Naked Cowboy followed the federal law and Trademarked his likeness and image over 10 years ago with the intent of licensing the use of his celebrity status for commercial purposes and Mars used his persona without permission or authorization. The parody defense is absurd in my opinion and is going to fail. Mr. Burck can easily prove that Mars has caused people to falsely assume that he endorsed their products and the jury will rule in his favor that Mars’ use of his persona is an infringement of his Trademark. I also suspect that we will see significant damages in this case because it is clearly an abuse by a major corporation upon a law abiding citizen. A definitive David & Goliath victory in my estimation.
As stupid as standing in your skivvies and strumming a guitar might sound, fact is, Burck thought of it … and you didn’t. Kind of makes me ponder my own career choices …
–|PW|–
That is a classic!
But Betsy — his name isn’t Mark!
Other than the chance to make a quick buck from a lawsuit, what am I missing here? I would have though that all of this free publicity would be something desirable for the “naked cowboy”. Certainly he is not going to loose business because people will say that since they had already seen the naked M&M they no longer want to see his act. The fact that many more people will know of him now should only help him get more business. For example, “the real Kramer” used the publicity he got from the Seinfeld show to make his living. Rather than consulting a lawyer, Mr. Burck should have spoken to a publicist.
Morbidly speaking, M&M’s probably should have hired a crazy cab driver to run over the guy in Times Square – NY has no postmortem right of publicity.
Richard, if Microsoft began putting the Apple logo on all its products, could it argue that Apple should have no complaints because it’s just getting free publicity?
To answer your actual question, the problem isn’t just one about publicity, it’s about the fact that by using his bit without permission they deprived him of the ability to negotiate an endorsement. Not all of his business is about whether nor not people drop by in Times Square.
Tons of legit businesses make money by lending their distinction to others. The Aerosmith version of Guitar Hero, the Madden football video games…hell, the product endorsement of Slim Jims by “The Macho Man” may all seem silly, but why should M&M just be allowed to take this very distinctive trademark and use it as their own just because it’ll give it more publicity? And what’s the real argument that it would actually GAIN more publicity? The whole point of the ad was to call attention to recognizably New York features, they must have thought that #1 people would actually recognize the cowboy act and #2 that it would please people enough to see it that they would make more money through sales. I own a businesses where I sell clothing. If I began slapping other people’s trademarks on my ads, I’d expect to be sued, and I doubt anyone would defend me on the grounds that I’m just giving out publicity. Why should the Cowboy’s business be treated any differently?
Mr. Nieporent,
You are missing the facts that Naked Cowboy has done many corporate endorsements and licenses prior to Mars using his persona including Chevrolet, Pepsi (only diet for him thank you) & Ford to name a few. Mars chose to use Naked Cowboy because of his iconic status along with King Kong, Marilyn Monroe & The Statue of Liberty… He didn’t need Mars to make him famous … Mars needed him to draw attention to their commercial conquest.
Paul,
Very well put and clearly defined … additionally, Naked Cowboy’s character/persona was used by Activision in the HUGELY popular video game; “True Crime: New York City” in 2005…
Thanks for the response Paul and Betsy. I guess I don’t get out often enough. Who knew that the naked cowboy was a “major corporation”? All this time I though he was just one step above one of those 42 Street winos. Now I understand why he filed this lawsuit. What I still don’t understand is why anyone would want to use him for an endorsement of a product. I grew up in New York City and there were no shortage of naked guys running around. Of course they had on raincoats as apposed to a cowboy hat and boots.
[…] Ron Coleman has the report. We covered the case in June. […]