Naked Cowboy V. Naked M&M
By: Ruvin Levavi
The past couple of years have seen the Cowboy image reinvented numerous times. Clint Eastwood has been pushed aside by the academy award winning Brokeback Mountain. Yet, before Hollywood decided to give the American West a makeover there was Robert Burck. Burck, better known as The Naked Cowboy, has become a staple New York tourist attraction. Burck created, The Naked Cowboy by spending years singing and playing his guitar in Times Square.
There are numerous street singers in New York but what makes Burck different and noticeable, is the image he created. Burck, entertains the throngs in Times Square while wearing only a cowboy hat, cowboy boots, and briefs. It took a little blue M&M man to challenge his position.
As part of an advertisement video the little M&M man is pictured wearing a cowboy hat, cowboy boots, and briefs. Further the setting of the billboard video evokes New York as it includes the Statue of Liberty. In response Robert Burck chose to sue Mars Inc., the owner of the M&M brand, for approximately four million dollars.
Although public figures have a curtailed right of privacy they still maintain a right to their own trademark. At common law the “right of publicity” protects celebrities, who hold a proprietary interest in their persona from being commercially exploited. Brinkley v. Casablancas, 438 N.Y.S.2d 1004, 1009-10 (App. Div. 1st Dept. 1981). According to such logic Burck has a strong case, as his entire proprietary interest is the outfit which he wears in New York. It is that outfit that separates him form the myriad of street singers and entertainers.
Burck may further find protection from the Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). The statute essentially prohibits an advertiser from making a misleading representation that a person is affiliated or sponsors the product. Woody Allen used the statute to protect his trademark when similar circumstance befell him, Allen v. National Video, Inc., 610 F. Supp. 612. Allen brought the claim when a video store advertisement used an unknown Allen look-alike in a pose characteristic of Allen, and visible in the background were movies associated with him. The court found for Allen.
Federal Court Judge Denny Chin stripped Burck of most parts of his trademark infringement lawsuit. However left intact is the allegation that the advertisement video left the impression that Burck himself endorsed the product. The Naked Cowboy may soon find that his image is worth four million dollars.