Burck v. Mars, Inc. (aka, the Naked Cowby v. M&Ms.)

I have to thank my student Jeniffer for bringing this to my attention. I have to admit, that I’ve actually seen stranger things happen in New York. And in this instance, I don’t know which is stranger, the Naked Cowboy or the lawsuit he has filed against Mars, Inc. for “trademark infringement under the Lanham Act and violation of his right of publicity under New York Civil Rights Law §51, arising from a video billboard for M&Ms.”

According to CNN, to lay a little ground work,

For the past 10 years, [the Naked Cowboy has been] the guy you’ve seen on the sidewalk, with the great body, strumming his guitar and singing, dressed in a cowboy hat, cowboy boots and underwear — and nothing else, even in the dead of winter. (Source)

A recent video ad produced by M&M, Mars, Inc. “depicts an M&M frolicking around New York, in what kind of looks like Times Square, in what kind of looks like The Naked Cowboy’s outfit — briefs and nothing more than a smile.”

Now, I don’t pretend to know (or even understand) trademark law in any great detail. I leave that to lawyers like my good friend Randazza to comment on. But, the limited amount of information I know, I have to agree with CNN that the guy might have a case.

According to the Naked Cowboy Complaint,

Burck has licensed The Naked Cowboy name and/or likeness to companies for the purposes of advertising and endorsement. Mars, Inc., had no immediate comment.

His character is part of the USA Network’s “Characters Welcome” campaign; he appeared in a music video for the song “Rockstar” by the multiplatinum artist Nickelback; and he’s featured singing in the video game “True Crime: New York City at Times Square.”

He also has appeared in several movies and television programs, including “Starship Dave,” “Survive This,” “Mulva: Zombie A** Kicker,” “Steve Harvey’s Big Time,” “New York Minute,” “Creature Feature,” “Lonely Planet,” “Troma’s Edge,” “American Icon” and “The Howard Stern Show.”

Well, as always, I will strive to keep you informed as to the developments of this case.

Yee haw!

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7 responses to “Burck v. Mars, Inc. (aka, the Naked Cowby v. M&Ms.)

  • Bob Wayman

    Since when does an M&M wear briefs (or boxers, for that matter)? To the best of my knowledge, the delicious, tiny, neat (“Melts in your mouth, not in your hand”) candies have spent their entire existence naked as the day they were born, aside from their spiffy matching white gloves and shoes combo:
    http://www.m-ms.com/
    If the Naked Cowboy plies his trade anywhere near Madison Ave., likely thousands of advertising’s finest see him every day, and the gears in their brains start grinding, with only one goal in mind: SELLSELLSELL! Most of them, like me, are not versed in trademark law, but come on, this is quite the coincidence.
    Update: The Naked Cowboy triumphant!
    ‘“They took down the video two days ago. Everyone’s telling me it’s an open-and-closed case,” the Naked Cowboy told the NY Post. ‘
    http://blogs.wsj.com/law/2008/02/15/naked-cowboys-lawsuit-drives-mm-outta-dodge/?mod=googlenews_wsj

  • Jennifer Augustine

    The Naked Cowboy is somewhat a New York celebrity. Well known across the country for his attire. However, it is strange to consider a guitar, underwear, cowboy boots and hat as a trademark. I suppose any image a person, such as Burck, works to build and create has a right to sole ownership of that image. It is unclear whether the likeness in M&M’s ad is enough for Burk’s claim, but it seems reasonable that M&M should compensate Burck for his licensed trademark as other companies have previously done.

  • Susanne Joslin

    The Naked Cowboy just may have a case against Mars, Inc. for trademark infringement and violation of his right ot publicity. What is sad though, is that for as much money as Mars, Inc. makes, it won’t considerably affect them to pay the penalty to Mr. Burck. Good thinking on his part to trademark his likeness and name, way to CYA.

    Think the Bronco Barrell Man registered his barrell?

  • Beth Bell

    Savvy don’t mean smart.

    I read the complaint for the fun of it and I was stunned at the $6 million in damages The Naked Cowboy is seeking. So I asked myself, where did this figure come from? Thanks to Google, I got my answer from a Mainstreet.com article dated February 20, 2008.

    “It was difficult number to come up with,” says the Cowboy’s lawyer, Scott Rothman, who traveled from Conshohocken, PA to rep him. “There are two counts, one for trademark infringement, asking for $2 million on that, and $2 million on right of publicity…And then we’re asking for $2 million in punitive damages. So one way to look at it is really 2 plus 2, or aggregate the 2 counts and that’s how the media got 6.”

    Yeahhhh, pretty difficult.

  • Jenn Thornhill

    After reading the articles posted online I believe the naked cowboy has a chance at winning his case. Its too much of a coincidence that M&M’s are dressing like him. what I found more interesting is that mars, inc. (3 weeks after naked cowboy filed suit) filed a petition w/ US patent & trademark saying naked cowboy commited fraud by not listing all items covered by the trademark. They probably are just doing it to try and get the media on naked cowboy and off them.

  • AL (AJ) Pierce

    I have not actually seen this advertisement; however, I lived in New York for a few years and I am very familiar with The Naked Cowboy. He is world reknown and has a reputation on the streets. A spectacle in deed! I belive that if Mars Inc. blatantly “stole” his persona for the sale of their goods. I do believe that he would have a great case in court. I also thought that Mars Inc’s legal advisors would have or should have got some kind of permission from Burck before releasing the video. It reminds me of bad business.

  • Jennifer Mackall

    I have never seen or watched any of the movies with the Naked Cowboy. I think the Naked Cowboy might come out on top with the lawsuit he filed for trademark infringement and his right of publicity. Mars Inc. tried to imitate the Naked Cowboy and it sounds like he has every right to feel entitled to damages. I hope it ends up in his favor.

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