Published Articles

December 10th, 2008

Lanham Act - Not Right of Publicity - Provides Best Shot for the “Naked Cowboy”

A federal court in New York has ruled that the "Naked Cowboy" of Times Square fame may advance a Lanham Act claim against candy and food maker Mars, Inc. For advertisers, the ruling was another defeat in the ongoing battle over when it's acceptable to use popular culture in a marketing campaign.

In Burck v. Mars, Inc., 571 F. Supp. 2d 446 (S.D.N.Y. 2008), street entertainer Robert the "Naked Cowboy" Burck sued Mars, Inc. and its marketing agency for depicting on two oversized video billboards in Times Square a blue M&M dressed like the "Naked Cowboy." The M&M – like the Naked Cowboy – wears a white cowboy hat, white underwear, and white cowboy boots, while playing a white guitar. Burck made two claims. He alleged that the defendants violated his right of publicity under New York law, which prohibits the use of anyone's name, portrait, picture, or voice in advertising without written permission. In addition, he claimed that the Cowboy M&M in the video billboard violated the Lanham Act by falsely suggesting he had endorsed or agreed to be associated with M&M candy.

Right Of Publicity Claim Fails

Sections 50 and 51 of the New York Civil Rights Law govern the right of publicity 1 in New York. Section 50 makes it a crime punishable by up to six months in jail to use "for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person." Section 51 affords a person a claim for damages, injunctive relief and punitive damages for violation of such rights. In New York, unlike California and most other states, the right of publicity is exclusively statutory; there is no common law right of publicity.

The key question for the court was whether Mars' use of Burck's costume was a "portrait" or "picture" of a "living person." While the Cowboy M&M evoked certain characteristics of the "Naked Cowboy," the court hewed to the plain language of Section 50 and 51 of the New York statutes and ruled that the Cowboy M&M was not a "picture" or "portrait" of a "living person." Unlike the success Jackie Onassis had in claiming that the use of a model made to look like her constituted a "portrait" of her,2 the judge held that the statutory right of publicity "does not extend to fictitious characters adopted or created by celebrities." The court therefore dismissed Burck's right of publicity claim.

False Endorsement Claim Under The Lanham Act Proceeds

The importance of the decision rests in the Court having found no use of Burck's likeness but nonetheless holding that he had a claim under Section 43(a) of the Lanham Act. Section 43(a) creates liability for "[a]ny living person who, on or in connection with any goods or services, ... uses in commerce ... false or misleading representation of fact, which is likely to cause confusion ... or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person."

Burke alleged that consumers seeing Mars' advertisements would incorrectly conclude that Burck had endorsed M&M candy. In support of his claim, Burke averred that he had licensed his name and likeness to third parties for endorsements and advertisements, including an appearance in a Super Bowl commercial for Chevrolet. In response, the defendants argued that consumers were not likely to be confused because their use of the "Naked Cowboy" persona was a parody and conjured up only so much of the character as was necessary for consumers to get the joke.

The court allowed Burck's claim under Section 43(a) to proceed. Whether the M&M characters were First Amendment-protected parodies of the "Naked Cowboy" raised factual questions that the court could not decide on a motion to dismiss. Some consumers might view the M&M characters as parodies, said the court; while some consumers might view them as an endorsement of M&M's by Burck. A fact finder would have to decide.

Import Of The Decision

Burck v. Mars Inc. teaches that while playing off popular culture in advertising may not give rise to a claim by associated celebrities under the applicable state's right of publicity statutes, advertisers must always beware of false endorsement or association claims brought under Section 43(a) of the Lanham Act. Indeed, the "Naked Cowboy" may join Woody Allen,3 Tom Waits,4 and Vanna White5 on the ever-growing list of celebrities who have successfully used the Lanham Act to obtain monetary recourse based on a claim for misappropriation of their personas.

And while New York courts are unlikely to depart from the literal text of the New York right of publicity statute, advertisers and practitioners should note that the scope of the right of publicity varies widely from state to state. For example, California courts have given an expansive reading to that state's common law right of publicity. Thus, in addition to a false endorsement claim under the Lanham Act, Vanna White was able to proceed with a claim that the use of a robot wearing a blonde wig, a string of white pearls, and a red dress while standing in front of the Wheel of Fortune game board violated her right of publicity.

Footnotes

1. The right of publicity in New York is subsumed in the right of privacy statutes. Stephano v. News Group Publications, Inc., 64 N.Y.2d 174, 485 N.Y.S.2d 220, 224 (1984) ("'right of publicity' is encompassed under the Civil Rights Law as an aspect of the right of privacy").

2. Onassis v. Christian Dior-New York Inc., 472 N.Y.S.2d 254 (N.Y. Sup. Ct. 1984)

3. Allen v. National Video, Inc., 610 F. Supp. 612, 627 (S.D.N.Y. 1985) (upholding Allen's claim of false endorsement for use in an advertisement for video-rental stores a look-alike renting videos).

4. Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1107 (9th Cir. 1992) (affirming judgment for Waits on false endorsement claim for use in a snack food commercial of a singer who imitated plaintiff's unique singing style).

5. White v. Samsung Elecs., Inc., 971 F.2d 1395 (9th Cir. 1992) (holding that there was genuine issue of material fact precluding summary judgment as to false endorsement claim brought by "Wheel of Fortune" hostess White for use in an advertisement for VCRs of a look-alike caricature robot; White was also allowed to proceed with her California common law right of publicity claim).

- Christopher R. Chase