While we don’t often discuss intellectual property on the Buttafuoco & Associates blog, it’s an important aspect of the U.S. legal system. Intellectual property and trademark law play a crucial role in safeguarding many citizens’ creative and business assets, ensuring that their hard work is not exploited by others. In this article, we’ll discuss the case of a New York legend: the Naked Cowboy, and what New York copyright and trademark lawyers sometimes consider the fuzzy line of trademark infringement. If you are concerned about trademark infringement or another serious legal matter, call Buttafuoco & Associates at 1-800-NOW-HURT or click for a free case review. Regardless of the type of case, we can offer advice and clarify your rights.
Who is the Naked Cowboy?
Robert John Burck, better known as the Naked Cowboy, is a well-known street performer in New York City, famous for his signature outfit consisting only of white cowboy boots, a cowboy hat, white briefs, and the acoustic guitar he plays. Since he first started performing in Times Square in 1999, Burck has become an iconic part of New York City and has since obtained corporate sponsorships and licensed merchandise. He’s become so famous that the New York Tourism Department says that he is more popular than the Statue of Liberty.
Over a decade ago, Mars, Inc., the makers of M&M’s, attempted to capitalize on Burck’s iconic image with an animation in their Times Square store that evoked the Naked Cowboy’s image. On February 15, 2008, the Naked Cowboy filed a lawsuit alleging that Mars, Inc. was using his image and likeness for commercial purposes. While portions of the lawsuit were dismissed, in the end Burck and Mars, Inc. settled the lawsuit for an undisclosed amount.
Naked Cowboy v. CBS
While the Naked Cowboy was successful in defending his turf against the makers of M&M’s, his trademark rights only go so far, and the difference between similarities and trademark infringement are often blurry. In 2012, a New York federal judge dismissed a trademark lawsuit brought by Robert Burck over a character featured on The Bold and the Beautiful, where he alleged that the CBS soap infringed on his trademarked brand and tarnished his reputation.
In late 2010, The Bold and the Beautiful featured a character named Oliver who for several seconds during one episode also played guitar only in his briefs and a cowboy hat. CBS also posted a clip on YouTube with the title, “The Bold and the Beautiful — Naked Cowboy,” also purchasing adword advertising on “naked cowboy,” so that consumers would find it if they searched for the term.
These activities led to a lawsuit against CBS and Bell-Phillip by Naked Cowboy Enterprises. Burck demanded the show’s $1.5 million in ad revenue for the episode.
New York judge Barbara Jones later granted the defendants’ motion to dismiss the litigation, noting that the trademark phrase “Naked Cowboy” doesn’t appear anywhere within the show. The only use is in the YouTube clip’s title, but the judge said this was not actionable.
CBS, represented by Levine Sullivan Koch & Shulz, was also successful in beating the Naked Cowboy’s other claims, including unfair competition, dilution, fraud, and civil rights violations. The judge agreed with the network that since the Naked Cowboy wasn’t in the daytime soap business, the quality of the plaintiff’s brand was not tarnished.
“The Naked Cowboy costume is indeed distinctive, but…the similarities between Oliver’s costume and the Naked Cowboy costume are minimal at best,” wrote the judge. A key part of copyright law holds that superficial similarities aren’t necessarily enough to make an actionable legal case. As you can see, these cases are complicated and nuanced, so working with an attorney is often in your best interest.
If you find yourself in a similar situation, get in touch with Buttafuoco & Associates at 1-800-NOW-HURT.
