Naked Cowboy Tells Naked Cowgirl to Get Dressed - Fordham Intellectual Property, Media & Entertainment Law Journal
post-template-default,single,single-post,postid-1486,single-format-standard,ajax_fade,page_not_loaded,,select-theme-ver-3.3,wpb-js-composer js-comp-ver-6.6.0,vc_responsive

Naked Cowboy Tells Naked Cowgirl to Get Dressed

Naked Cowboy Tells Naked Cowgirl to Get Dressed

Robert Burck – better known as The Naked Cowboy – may not seem imposing in his uniform of white briefs, boots, cowboy hat and guitar, but Sandra Brodsky is learning the hard way how serious he takes his image.  Brodsky, who also goes by Sandy Kane, first appeared around the city as The Naked Cowgirl about two years ago.  Burck, who registered his image with the U.S. Patent and Trademark Office, asked Brodsky either to sign a franchise agreement or to halt her scantily clad performances – but to no avail.

Burck is now suing Brodsky in the Southern District of New York alleging, among other things, trademark infringement, unfair competition, false advertising and dilution of his trademark.  Brodsky responds that Burck’s trademark expired in 2009, but even if it did not, she did not infringe Burck’s trademarked image.  Brodsky also argues that her performances are protected by the First Amendment. The case is captioned Naked Cowboy v. Brodsky, 2010-CV-05539, and the pleadings are available here.

Many may be aware of Burck’s 2008 lawsuit against Mars Inc. for airing advertisements featuring an M & M dressed in a getup similar to Burck’s.  In that case, Burck v. Mars, Inc., 571 F. Supp. 2d 446 (S.D.N.Y. 2008), Burck brought a state law “right to publicity” claim and a federal trademark claim, alleging that Mars infringed his trademarked image “by using his likeness, persona, and image for commercial purposes without his written permission and by falsely suggesting that he ha[d] endorsed M & M candy.”  Id. at 448.  The court dismissed Burck’s right to privacy claim, but permitted the trademark claim to go forward.  Following the court’s decision, the parties stipulated to dismissal of the suit in November, 2008.

Kimberly Shindel