I’ll admit it: as Etsy’s in-house attorney, I love reading legal disputes and thinking about what important issues each side should stress. I especially like to analyze pending copyright, trademark, and patent cases. I daydream about what points I would argue if I were the lawyer for each side and then I put on my imaginary judge’s robe and make a decision.
Well, here’s your chance again. If you were the judge, what would you decide on this real-life on-going legal battle? (Remember, this issue hasn’t gone to court yet).
Robert Burck (aka the Naked Cowboy), clad only in underpants, boots, a cowboy hat, and a strategically placed guitar has entertained New York City Times Square tourists for over ten years.
Mars, Inc., which makes M&Ms, and Chute Gerdeman Inc., an Ohio advertising agency, released two Times Square billboards and print ads showing an M&M strumming a guitar, dressed in a white cowboy hat, cowboy boots and underpants, alongside views of New York.
Recently, Burck filed a lawsuit alleging that the ads violate his right to privacy and infringe on his trademark by “using his likeness, persona, and image for commercial purposes without his written permission and falsely suggesting that he endorses M&M candy.” Burck is seeking up to 100 million dollars in punitive damages plus attorney’s fees.
So what do you think? Are the advertisements confusingly similar to Mr. Burck’s trademark, in relation to similar products or services? In general, the court will look at eight elements to measure likelihood of confusion including the strength of the Naked Cowboy’s mark, the degree of similarity between the two marks, and the proximity of the products. In the comments below, you be the Judge!