Adrian Johnson
July 28, 2008
Mass Comm. Law
Research Brief
The Naked Cowboy(s)?
Robert Burck aka: The Naked Cowboy v. Mars Inc. (2008), Manhattan Federal Court
In Burck v. Mars Inc, Robert Burck who is well known in the New York City area
as “the Naked Cowboy”. This persona is portrayed by his signature cowboy boots,
cowboy hat, underwear and his guitar strumming skills. The character is his livelihood
and his means of income. Since 1998 he has been strumming through the streets of New
York as well as having guest appearances at events ranging from Mardi Gras in New
Orleans to music videos and television programs. In 2007 he recorded his first album
with JAMBOX recording studios and was featured on MTV news.i The Naked Cowboy
has become well known in not only New York City but in the greater United States.
Mars Incorporated are the creators and producers of the M&M marketing scheme
including the well known M&M’s that take on human personification. Mars Inc. created
a short animation of Blue M&M playing a guitar while dressed in a white cowboy hat,
cowboy boots and underpants on the electronic animation display that hangs outside the
M&M’s store at Times Square, New York. Burck owns the trademarks to the Naked
Cowboy name and likeness.ii
The defendant clearly has procured Mr. Burck’s livelihood and used it for their
financial gain without his permission. It is the intention of the Plaintiff to show that this is
a violation of Mr. Burck’s trademark rights and privileges, and an infringement on his
rights as a United States citizen.
We see from the areas of privacy law including appropriation that it is illegal to
appropriate an individual’s name or likeness for commercial or trade purposes without
consent. Appropriation is defined as taking a person’s name, picture, photograph or
likeness and using it for commercial gain without permission.iii This law has been
reformed and defined by way of case law and citations throughout the years.
It is with this purpose in mind that examples will be cited. In 1902 Abigail
Roberson of Albany New York found her picture placed on posters all over town in
advertisements for Franklin Mills Flour Company. In this claim the plaintiff was suing
for invasion of privacy. At the time the state’s high court ruled that “the so-called ‘right
of privacy’ has not yet found an abiding place in our jurisprudence, and, as we view it,
the doctrine cannot now be incorporated without doing violence to settled principles of
law by which the profession and the public have long been guided”. This controversial
decision from the courts was the beginning of an outcry for the way Ms. Roberson had
been treated and as a result the nation’s first privacy laws were adopted.iv
Almost sixty years later in the courts more narrowly defined this appropriation
and added a precedent to protect the media from such suits. The defendant may attempt to
use this precedent to show that their publication is protected. The Booth rule procured
from the Booth v. Curtis Publishing Co. states that “the use of a person’s name or
likeness in an advertisement for a magazine or a newspaper or a television program is
usually not regarded as an appropriation if the photograph or name has been or will be a
part of the medium’s news or information content.”v To be protected in this rule the
medium would have to show that the procured advertisement appeared in a medium and
was republished or re-used for the same intended purpose. It is the plaintiff’s argument
that the defendant had no such intent and that the medium in question was produced
unlawfully and in violation of privacy laws therefore the Booth rule would not be an
applicable defense in the claim.
Thirty years later in the White v. Samsung case (1992) Ms. Vanna White brought
to court a similar example of appropriation when Samsung Electronics produced a
television commercial in which a robot dressed in an evening gown and blonde wig was
on a similar set to that of “Wheel of Fortune” and in the footnotes it read “longest
running game show, 2012 A.D.” the point was that Samsung products would be around
long after Vanna White was replaced by a robot. Even though Samsung did not use Ms.
White’s name or exact image, the likeness was unmistakable. Ms. White won her case in
the 9th U.S. Circuit Court of Appeals which ruled that “The identities of the most popular
celebrities are not only the most attractive for advertisers, but the easiest to evoke without
resorting to obvious means such as name or likeness or voice”. The ruling was that
performers should be protected from exploitation. It was also added to the decision of the
courts that to protect the media from appropriation suits, a disclaimer could be added in
an advertisement as long as it is prominent in the ad, not just small type on a large page.vi
Therefore we see that the defendant has not only infringed upon the Plaintiff’s privacy
rights but what’s worse, the whole thing would have been remedied with the simple
phone call to acquire consent or a disclaimer placed strategically in the advertisement
stating that Mr. Burck has not endorsed M&M’s directly.
The Defendants actions are not only a direct violation of the Federal Lanham Act
which protects registered trademark rightsvii, But according to Ali v. Playgirl where the
courts appropriated a precedent “the right of publicity recognizes the commercial value of
the picture or representation of a prominent person or performer, and protects his
proprietary interest in the profitability of his public reputation or persona”viii In this
regard the Plaintiff must show that he is a prominent figure who is publically recognized.
This fact is addressed in his many published and recognized debuts in all different
mediums around the country, some of which have been listed earlier in this brief. Mr.
Burck has frequently been introduced on television shows, music videos, and events.
The Naked Cowboy has not only been prominent in the New York area in which
the alleged infringement took place, but has been prominent in a number of different
medium. Mr. Burck obtained a trademark on his performing character for purposes of
corporate and marketing purposes and owns the trademark rights to the Naked Cowboy’
persona. A trademark by definition is any word, symbol or device-or combination of the
three-that differentiates an individual’s or company’s goods and services from the
products or services of competitors. By using The Naked Cowboy personification, Mars
inc. has infringed upon Mr. Burck’s rights as a trademark owner. Mars Inc. used the
image of the naked cowboy for their own trade and financial purposes without first
recognizing the ownership of the trademark or acquiring the required permission to do so.
It is the Plaintiff’s feeling that the outlined infringements have portrayed him in a
false light of endorsement to Mars Incorporated and specifically the M&M’s product
without his consent or knowledge. It has been the plaintiff’s suggestion that as his
character persona, which has been infringed upon, is in fact his livelihood and means of
income, this infringement has a significant impact on his work. It is asked that the
defendant take on the responsibility of compensating for the Mr. Burck’s unauthorized
services or else retract the said infringing advertisements.
i
www.biography.com; Robert John Burck
CNN News Corporation;
iii
Don R. Pember Clay Calvert, Mass Media Law
iv
Roberson v. Rochester Folding Box Co., 171 N.Y. 538 (1902)
v
Boot v. Curtis Publishing Co., 11 N.Y.S. 2d 907 (1962)
vi
White v. Samsung Electronics America, Inc., 971 F. 2d 1395 (1992); rehearing den. 989F.2d 1512 (1992)
vii
Don R. Pember Clay Calvert, Mass Media Law; pg.562-567
viii
Ali v. Playgirl, Inc., 447 F. Supp. 723
ii
Bibliography
Secondary Sources:
www.CNN.com; The Naked Truth About the Naked Cowboy Case.2008
United States District Court for the Southern District of New York, official published
complaint.
The New York Post; NY’s Naked Cowboy sues M&Ms maker for $6 million. 2008
The Wall Street Journal; The Naked Cowboy Sues The Naked M&M. 2008
Primary Sources:
White v. Samsung Electronics Inc.
Don R. Pember Clay Calvert, Mass Media Law
Roberson v. Rochester Folding Box Co.
Booth v. Curtis Publishing Co.