Judge OKs Naked Cowboy Suit Against Blue M&M
You’ll be happy to know that the $6 million lawsuit filed by the New York City street performer known as Naked Cowboy against M&Ms candy maker Mars Inc can go forward on grounds of trademark infringement, a judge ruled on Monday.
Photo: Getty Images, nypost.com
Robert Burck — a fixture in Times Square for ten years, strumming his white guitar while dressed only in white cowboy boots and hat and tightie-whities — filed the suit in February over video billboards depicting a blue M&M dressed in his signature outfit. A U.S. District Court Judge denied a motion to dismiss the lawsuit, ruling that Burck may proceed with his false endorsement claim, “for he plausibly alleges that consumers seeing defendants’ advertisements would conclude — incorrectly — that he had endorsed M&M candy.”
Burck, who poses for photos with giggling tourists in return for dollars slipped into his boots, has trademarked his look and licensed his name and likeness to companies for endorsements and advertisements, including a Chevrolet commercial that appeared during a Super Bowl, the suit says. Read more…
Makes you wonder what Mars, and Chute Gerdeman Inc, their ad agency, were thinking. Still, it will be an uphill battle for the cowboy against Mars. Trademark laws seem to exist for big companies while little guys rarely get equal treatment. For example, in this case, the judge basically threw out Burck’s claim that his registered trademark had been infringed, saying that he might have a shot at claiming the M&M ad implied an endorsement, a foot in the door but a significantly diminished position.
But imagine if the roles were reversed. What if the cowboy had donned an M&M suit? Mars would have crushed him in court like a souvenir penny. And what if Mars had had their M&M wearing a Coke outfit? I rest my case. Trademark law offers an uneven — and unfair — playing field.
But good luck, Naked Cowboy. I hope, at the very least, you win a hefty endorsement fee.
Doug
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Reader Comments (19)
I say good luck with your case against M&M.
Mars claims they were doing a parody so are exempt from copyright law. I guess that depends on whether they had the words M&M on the billboard. But I suppose also that it is such a recognizable character (the M&M) that it might be considered an ad anyway.
I hope Naked Cowboy wins! Go Naked Cowboy!
I believe that when Mars does these "parodies", they are doing it to extend their brand recognition. So no matter how much they try to veil what they are doing, it is still advertising and an infringement. All they had to do was negotiate a fee and there would have been no problem.
Mars has done these "parodies" before and I bet they haven't paid any of the brands they exploited. I hope they pay through the nose.
It seems to me that Maers would be better off settling the case by giving Naked Cowboy a nice endorsement fee in exchange for his doing an ad. Cowboy would be happy and Mars would seem like a good guy with all the associated good press. Win win, right?
Me and my sisters had our picture taken with Naked Cowboy when we were in NYC last year. It was so great! He was really nice! Great bod too!
I think you are right, trademark protection applies to the big companies and us little ones get trampled whenever there is a big company involved. If this guy was wearing the M&M suit on an electric billboard in Times Square, Mars would have rolled over him in court in a NY minute. But reverse the rolls and the courts are reluctant to ruffle Mar's feathers. And he probably doesn't have enough money to fight the battle in court, so he will be easy to crush or give a little settlement to.
Right. His attorney is probably on contingency and will invest some time filing papers etc, but when it gets down to it, he will be looking for a quick settlement, skim off his contingency fee and move on. Mark my words.
It will be short and quick. Mars will figure how much a court battle will cost them and offer a fraction to settle. It will be over quickly.
Carol is right, Mars could turn this into good press (instead of looking like a big bad company crushing a little guy) by apologizing, paying an endorsement fee and then paying NC to do an ad.
Could be good for everyone. Win-win.
I think the whole thing is a big waste of time.
This case will settle because there doesn't exist any "confusion" as to whether the M&M is or is not the Naked Cowboy, although the issue of implied endorsement will need to be meated out.
But here is the real question: Doesn't anybody have a sense of humor anymore? There was a time when this type of “homage” would have been appreciated by the referencee because it served to reinforce that person's pop culture stature.
The NC vs. Blue M&M thing is the video-of-the-day on MSNBC. NBC's Dan Abrams thinks Burck has a shot to win the case!
But "homage" doesn't cut it when the law dictates that if you don't protect your trademark, you lose it. If he values his trademark, he has no choice.
I had to dress like that M&M when I was a child. Seeing the ad has given me the strength to finally talk about it.
The bare facts hurt. Couldn’t Mars see the naked truth?
LOL!! Good (bad) one Greenie!
Thanks. I crack myself up.
I love M&Ms (peanut) and I love Naked Cowboy. All Mars had to do was pay him for using his likeness. Would they dress up a candy like Michael Jordan without his permission or letting him get a piece of the pie. No. So why should the Naked Cowboy not be allowed the same benefits of his brand? Go Naked Cowboy!
I agree, it is only fair when it works both ways.
Why all this fuss over a looser whose claim to fame is walking around Time Square in his underwear? If I did that tomorrow, I would be hauled to jail. Not for indecency but because I didn't pay the city for a permit. Our society is in the toilet!!!!
It is about the little guy receiving the same protections under copyright law as the big corporations. You should care about that too.