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Hostin: It's Naked Cowboy, 1; naked M&M, 0

  • Story Highlights
  • Federal judge rejects M&Ms maker's parody defense
  • He notes that The Naked Cowboy, aka Robert Burck, registered his trademark
  • Burck is suing Mars Inc., the maker of M&Ms, for copyright infringement
  • Case involves guitar-slinging blue M&M in cowboy hat, white underpants
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By Sunny Hostin
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Sunny Hostin is a legal analyst on "American Morning."

NEW YORK (CNN) -- I like it when I'm right, especially about naked men. Especially about naked cowboys.

A federal judge's opinion includes side-by-side photos of the key players in The Naked Cowboy case.

When I wrote in April that the lawsuit filed by Robert Burck "may be the end of the era of the "naked" cowboy and predicted he would be able to afford some "very nice duds," my fellow lawyers laughed at me.

One close friend -- let's call him Larry -- said as he snickered, "I read your article. You can't be serious. You really think that the Naked Cowboy is going to cash in? Well, I predict he is going to get thrown out of court. If he doesn't, maybe I will start walking around my office in my tighty whities."

Last week, U.S. District Court Judge Denny Chin didn't throw the cowboy from his steed. In fact, in a lengthy decision, Judge Chin ruled against the makers of M&Ms, rejecting Mars, Inc.'s attempt to dismiss the Cowboy's lawsuit. And it seems that Judge Chin has a sense of humor.

On the first page of his decision, the judge pasted photos of the litigating parties side by side and wrote, "This is the case of The Naked Cowboy versus The Blue M&M."

And what a case it is. Burck sued Mars in April for $6 million in federal court in New York. The central allegation: trademark infringement under the Lanham Act, arising from a video billboard for M&Ms.

Most people, and maybe Mars, thought the Cowboy was just a kooky street entertainer dressed in his underwear. However, I've spoken to Mr. Cowboy, I mean, Mr. Burke, and he didn't seem kooky to me at all. In fact, he seemed kinda smart.

Even Judge Chin recognized that The Naked Cowboy is no ordinary street entertainer. Although he performs in New York City's Times Square in little more than underwear and a smile, he has registered trademarks to "The Naked Cowboy" name and likeness.

And he doesn't just sing in Times Square. He has a Web site with his modeling photos and has a link to You can download his music on iTunes. You can buy his tighty whities from his online store for $15. He even has a podcast.

Judge Chin observed that "Burck has appeared as The Naked Cowboy in various television shows, movies, and video games. He has also licensed his name and likeness to companies for endorsements and advertisements. He even appeared in a Chevrolet commercial that aired during Super Bowl XLI.

Judge Chin then explained that "beginning in April 2007, Mars began running an animated cartoon advertisement on two oversized video billboards in Times Square, featuring a blue M&M dressed "exactly like The Naked Cowboy," wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar." And get this -- the video "played on a continuous loop every few minutes over a nine-month period."

Mars tried to defend itself by arguing that the Blue M&M was just a parody of the Cowboy and was protected under the First Amendment.

Although imitation is supposed to be the sincerest form of flattery, Judge Chin didn't agree with M&M's parody argument. Rather, Judge Chin thought it was a question for a jury to decide and wrote that the complaint "plausibly argues that consumers would believe that the M&M Cowboy characters were promoting a product rather than merely parodying The Naked Cowboy, and that viewers would believe that The Naked Cowboy had endorsed M&Ms."

Then Judge Chin ordered the lawyers to appear in his courtroom for a pretrial conference on July 11 at noon. High Noon.

That Judge Chin makes me laugh. Round One to the Cowboy. Larry, maybe you should start walking around the office in your tighty whities.

All About TrademarksTimes SquareMars Inc.

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