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The naked truth about The Naked Cowboy case

  • Story Highlights
  • The Naked Cowboy, aka Robert Burck, registered his trademark
  • He has filed a federal lawsuit against Mars Inc., the maker of M&Ms
  • His suit seeks $6 million
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By Sunny Hostin
CNN
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Sunny Hostin is American Morning's legal analyst.

NEW YORK (CNN) -- Most New Yorkers and visitors to Times Square know of The Naked Cowboy.

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The Naked Cowboy is part of the scenery at New York City's Times Square.

For the past 10 years, he's 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.

As a native New Yorker, I will admit that at times, it has been my guilty pleasure to walk or drive by The Cowboy to see if he can bear the elements. To my amazement, he's always there and pretty naked -- in rain, sleet, snow, heat or bitter cold.

I've even taken pictures. Video Watch The Naked Cowboy in his natural habitat »

Well, it seems that Mars Inc., the makers of M&Ms, also knows about Robert Burck (The Cowboy's real name). Burck sued Mars this week for $6 million in federal court in New York. The allegations: 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.

The video ad 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.

There have been plenty of jokes about the lawsuit, and I'm especially fond of the ones found on The Wall Street Journal Law Blog on Thursday, such as:

  • "If his lawyers' briefs are as tight as his, he will certainly win." -- Acepilot
  • "Thought this was about a naked cowboy. If the plaintiff is wearing briefs then he is not naked. No case." -- Akex
  • "I'm going to sue Burck. I walk around in my underwear all of the time -- he is ripping me off!" -- woz
  • All jokes aside, I think he may have a case. In order for him to show trademark infringement, The Naked Cowboy has to be trademarked; has to prove that Mars, without his consent, infringed upon the trademark; and has to show there's a "likelihood of confusion" between his trademark and the allegedly infringing mark -- in this case the naked M&M.

    To state a claim under New York's civil rights law, Burck has to show that Mars used his name, portrait or picture for purposes of trade or advertising, and without his written consent.

    Surprising to some -- at least to me -- The Naked Cowboy's name and likeness are in fact registered trademarks owned by Burck.

    According to the 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."

    He even appeared in a Chevrolet commercial that debuted during Super Bowl XLI.

    And this isn't the first time a pseudo-celebrity (sorry Cowboy) has sued and won. Remember Vanna White? She was awarded $403,000 when Samsung used a robot, wearing a blond wig, jewelry and a dress, that turned letters on a game board similar to White's role on "Wheel of Fortune," the TV game show.

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    Still laughing? I'm not.

    At the end of the day, this lawsuit may be the end of the era of the "naked" cowboy. I predict he will be able to afford some very nice duds. E-mail to a friend E-mail to a friend

    All About Times SquareMars Inc.

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