Burck v. Mars, Inc., et al.

In a case involving a New York City Times Square street performer known as The Naked Cowboy and M&Ms animated video ads in Times Square featuring a blue M&M dressed as The Naked Cowboy, the district court granted the defendant candy company and ad agency’s motion to dismiss the right of publicity claim but denied the defendants’ motion to dismiss the false endorsement claim under the Lanham Act.

The plaintiff has performed as The Naked Cowboy in Times Square for ten years, wearing only a white cowboy hat, cowboy boots and underpants (which are usually hidden by his guitar). He has appeared on television shows, in movies and video games, licenses his name and likeness for commercial products, and is a popular tourist attraction.

Defendant Mars, Inc., maker of the M&M candies, retained ad agency Chute Gerdeman, the co-defendant, to create a video for two electronic billboards in Times Square and a mural for its M&M World store located in Times Square. The video (an animated cartoon) featured a blue M&M dressed up like The Naked Cowboy. In addition to the M&M cowboy character, the video featured other M&Ms as famous New York figures, such as the Statue of Liberty and King Kong. The mural was a cartoon snapshot of Times Square and featured a yellow M&M dressed like The Naked Cowboy surrounded by M&Ms portraying everyday New Yorkers. The defendants did not request or receive permission from the plaintiff to use a likeness of The Naked Cowboy.

Burck sued for violation of his right of publicity under Section 51 of the New York Civil Rights Law and violation of the Lanham Act for false endorsement. The defendants asserted the affirmative defenses of fair use, First Amendment protection and parody.

The court granted the defendants’ motion to dismiss the right of publicity claim. New York Civil Rights Law § 50 makes it a misdemeanor to use “for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person.” Section 51 creates a cause of action for the invasion of the right of privacy granted by § 50.

The court noted that it was undisputed that the defendants did not invoke the name “Robert Burck” or the name of his character “The Naked Cowboy,” nor did they use Burck’s voice. Rather, the sole issue was whether the defendants used Burck’s “portrait” or “picture.” The court concluded that the defendants did not use Burck’s portrait or picture because they did not use an actual photograph of Burck nor did they use a recognizable likeness of him. “Although the defendants did evoke certain aspects of the character created by Burck, and they copied The Naked Cowboy’s costume, [] these actions were not prohibited by sections 50 and 51. Merely evoking certain aspects of another’s character or role does not violate sections 50 and 51 . . . [and the] plain language of the Civil Rights Law makes it clear that the statutory right to privacy does not extend to fictitious characters adopted or created by celebrities.”

The court next turned to the defendants’ motion to dismiss the Lanham Act claim, and found that the plaintiff had plausibly alleged a claim of false endorsement. The defendants argued that the M&M cowboy characters “conjure up just enough of Burck’s trademark . . . for consumers to recognize the target of the parody, while at the same time making ‘obvious changes to the marks that constitute the joke.’” The court held that whether the M&M cowboy characters were parodies of The Naked Cowboy raised factual questions that are not for the court to decide at this stage of the litigation and denied the defendants’ motion to dismiss. “Some consumers, as defendants argue, may view the M&M Cowboy characters as a part of a larger work depicting New York scenes and parodying famous New York characters. But other consumers may 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 factfinder may nevertheless conclude that the parodies were too weak to negate the potential for consumer confusion.”

Finally, the court denied the plaintiff’s motion to strike the affirmative defenses of parody, fair use and the First Amendment. The court rejected the plaintiff’s argument that the defendant could not use the defense of parody because the use was commercial. The court noted that the use of The Naked Cowboy’s likeness in the mural and videos was a hybrid use, containing both commercial and artistic elements. “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.”