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You be the Judge: Naked M&Ms

Jul 1, 2008

by Sarah Feingold

Etsy.com handmade and vintage goods

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.

According to a CNN article, Mars would not comment on matters of litigation.  The Wall Street Journal reported that Mars removed the billboard after the lawsuit was filed.

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!

Check out your previous judging opportunities here and here!

51 comments

  • redkatblack23

    redkatblack23 said 11 years ago

    In my opinion, I think it was careless of M'n'M not to approach this guy first and ask his permission and promise royalties for the ad. It is very obvious that it's him.

  • rockcreekcreations

    rockcreekcreations said 11 years ago

    This is interesting. If you break down all the parts, it sure looks like they were "copying" the Naked Cowboy. Why else would the advertising agency think to place an m&m in underpants, boots and guitar in New York? I don't think he deserves to get 100 million dollars but I do think he has a good case.

  • TotusMel

    TotusMel said 11 years ago

    Yeah, I don't know about 100 million dollars, but they were clearly doing a caricature of him with the intent of making money off of it and should have sought permission. Then again as a very public persona, isn't he naturally subject to a great deal of satire that cannot be controlled?

  • BellaMental

    BellaMental said 11 years ago

    This guy definitely has a case! You go Naked Cowboy!

  • krakenmosaics

    krakenmosaics said 11 years ago

    I think the 100 mill is steep but we are talking about M&M's here...you would think a company as large and successful as they are would know better! He should def be compensated somehow... maybe they can make a naked M&M?

  • classabags

    classabags said 11 years ago

    What make of unders does he have on are they compensating him for advertising for them? He should be compensated how about a years supply of M&M's. I think all this legal suits stuff is ridicules when you are in the public eye you should expect things like that.

  • olivehuedesigns

    olivehuedesigns said 11 years ago

    Considering that, even in Washington state, he is the only "Naked Cowboy" I know of/have seen...I think he has a case. $100 mil of a case? Heck no. It's not like it's caused him to lose money. I do think they should reimburse him equal to what they paid whoever they had to pay to use the Addams Family looks, or any of the other athletes whose images they used.

  • emilyfrances

    emilyfrances said 11 years ago

    I think Naked Cowboy should have looked at the M&M ads as a huge promotion for him that he didn't have to pay a dime for. If Mars has done anything they have helped his business, not hurt it.

  • Art2ArtColorado

    Art2ArtColorado said 11 years ago

    re: proximity of products...lol! (would candy & eyecandy fit?..both are discretionary treats) Seriously, i do think he's got a case with the trademark issue, but 100mil is excessive. *as mentioned, it really is too bad that Mars,Inc. didn't think to bring him onboard for the ad campaign in the first place. I do question the "right to privacy" part because he is essentially performing in public under his own free will, so I think the privacy issue flew out the window with his 501s. Mar's, Inc. has increased his fame tremendously (tarnished theirs somewhat) so, my novice guess would be that he'll probably come out with a good settlement the day before going to trial... with the terms remaining confidential. *either way, we'll be keeping an eye (or two) on this one. ;)

  • juicychristians

    juicychristians said 11 years ago

    I think he may have a case...and I do agree that 100 mil is a bit excessive. Did he actually have the his image and etc. protected anywhere or is it one of those cases where he did it first so that means it's protected?

  • emmaray

    emmaray said 11 years ago

    As another attorney who loves crafting and is OBSESSED with etsy, I dig your article. No comment on the lawsuit. Ha!

  • panoptica

    panoptica said 11 years ago

    I agree. They used the naked cowboy image but i don't think it is worth that much.

  • 1AEON

    1AEON said 11 years ago

    we heart western guns as we sell a lot of them on t-shirts!

  • HardwickHousewares

    HardwickHousewares said 11 years ago

    I would be really unhappy if a large company ripped off my work. It seems like large companies frequently do this to people that they think can't afford a lawsuit. I'm on the side of the cowboy!

  • magicouture

    magicouture said 11 years ago

    Naked Cowboy is right. M&M could parody him all day long if they were not doing so for commercial profit, but this passes fair use and goes directly into stealing. As per the amount, however, 100 Mil is a little much, although I don't really know how much they would normally pay for an ad campaign.

  • acidink

    acidink said 11 years ago

    Pretty bold move on the Mars end. It sure seems like the naked cowboy to me. I do think he should be intitled to something, that is his trade mark. Why didn't they approach him first? What does naked cowboy do for a living?(does he make enough money singing on the streets of new york to support himself)Maybe he was waiting for something like this to happen. CHA Ching$$$

  • leathermadenice

    leathermadenice said 11 years ago

    First, is Naked Cowboy a registered trademark? If not, I do not believe an idea can be stolen. Copying is the highest form of flattery. It happens in the fashion industry all the time. It is my opinion that M&M might consider hiring the Naked Cowboy for one of their commercials and have him strum along with the M&M cowboy. This way Naked Cowboy will make money from the royalties. ^i^

  • fabricfarrago

    fabricfarrago said 11 years ago

    Other articles I have read on this topic have noted that he does have a trademark on this image (while those articles could be wrong). Also, other articles mention that he has been paid by other companies who used his image in their marketing. Clearly, they did use his image or likeness in their marketing. I guess this will come down to whether or not he has a trademark and can prove infringement.

  • elizabethwrenvintage

    elizabethwrenvintage said 11 years ago

    being a brooklyner i feel strangley close to the naked cowboy and back him up 100% :-P

  • risamay

    risamay said 11 years ago

    He's totally got a case. He might not get 100 million, but he'll get something.

  • esdesigns

    esdesigns said 11 years ago

    well if someone made me into one of those m&m's i would not be happy. i'm not sure he has a case though- how someone dresses & where they live doesn't seem like a strong enough trademark & he would have to have bought the trademark, right? plus the intent is a caricature not cashing in on his trademark. it's still kind of awful though, i think they should have asked & paid him.

  • Spiderbite

    Spiderbite said 11 years ago

    You can't just use someone's likeness to sell a product. there is some leeway with caricature in and of itself, but you can't use a caricature to sell a product. And I think it's fairly obvious who they were referencing. The ad agency who made this should have known better. If they had made it look like Oprah they would have gotten permission. They just figured he was some shlub and they didn't have to. It's not just about money. What if he doesn't like the company? He should have complete control over what products he is being linked to.

  • ChristinaWard

    ChristinaWard said 11 years ago

    Violates the old 60% rule. Wins on infringement. No win on privacy.

  • flowernicky

    flowernicky said 11 years ago

    they should've gotten his permission but the 100 million is utterly ridiculous, I mean they should pay him royalty's and some punitive damages but really gime a break 100mil.

  • curlyfrysc

    curlyfrysc said 11 years ago

    "his right to privacy" hahaha That made me laugh! The guy is practically naked on the streets! Anyway, I do think he has an argument. They are using his likeness without his permission.

  • MayaBella

    MayaBella said 11 years ago

    Ya. That is a lot of money. I think they should give him what they would have paid him for his consent. And then a little extra. Not 100million. Come on.

  • underthewire

    underthewire said 11 years ago

    I think that they intentionally copied him and should pay for it! It's his idea/image and they should've gotten his permission. Besides, I'm sure they'd a sued him in a New York minute (pun intended) if he stood around the city streets wearing a knock-off M&M suit. My question is who the heck wants candy that reminds you of a nude cowboy anyway?!?

  • underthewire

    underthewire said 11 years ago

    If my post is up here twice it's a computer glitch, sorry :)

  • LookingGlassJewels

    LookingGlassJewels said 11 years ago

    Without a doubt the ad is swiping The Naked Cowboy's image to promote their product. I hope he wins the case!

  • ValerieTyler

    ValerieTyler said 11 years ago

    You KNOW that if M&M did the ad first and then came along the Naked Cowboy they would have sued him----it'd be nice to see the "little guy" win for a change.

  • blacklilypie

    blacklilypie said 11 years ago

    For everyone saying "they should just pay him what they would have if they had his consent", why would any company even try to get consent if they could just take a stab at not paying for use, then if the person got upset and sued they just had to pay the normal amount. It would always be "worth a shot." 100 mil is to make them pay for wrongdoing and not do it again.

  • kreations

    kreations said 11 years ago

    why is he going for right of privacy instead of right of publicity? i'd choose the latter. i mean, if vanna can win against a robot, then naked cowboy can def' win against an m&m. i don't see this as infringing on the trademark. you've gotta meet all three aspects: rights, priority, and likelihood of confusion. Maybe he has rights - in new york, it may even be a famous mark, and he might be able to claim dilution. He def' has priority. But likelihood of confusion? I'm not buying that at all. Naked Cowboy's goodwill is not compelling me to buy M&M's, nor am I thinking that NC is endorsing the Mars Co.

  • SarahSays Admin

    SarahSays said 11 years ago

    Wow! So many thoughtful Etsy judges! Yes, it seems that Burck has a registered trademark. According to the United States Patent and Trademark Office website (www.uspto.gov) the word/mark "Naked Cowboy" is registered under the goods/services "Entertainment services, namely personal appearance by a celebrity..." (the full description is rather lengthy). I agree that $100 million is steep. Although, I may be biased because I love eating M&Ms. Sarah

  • classabags

    classabags said 11 years ago

    I have just one question. Has anyone heard of the Naked Cowboy before all this sueing stuff came up? Maybe New Yorker have but the whole country? I think Mars did him a favor. I think he owes Mars,Inc.

  • heathlove

    heathlove said 11 years ago

    Totally agree he has a case, but also think 100 million is extreme. I do hope he gets something though. If they had posted anywhere else but Times Square, it would just be an M&M dressed as a an M&M.

  • abitabite

    abitabite said 11 years ago

    oh they were so parodying him! If he has himself trademarked, i bet he has a case too. I also bet that 100 mill was so he could get a 10 million in settlements ;)

  • neversleeping

    neversleeping said 11 years ago

    ugh, i don't know. i mean if he has a trademark then M&M is kind of foolish for using his likeness. he is being pretty greedy though...you have to admit even 10 million is a ridiculous amount of money. give him like...$30. and a haircut.

  • neversleeping

    neversleeping said 11 years ago

    ugh, i don't know. i mean if he has a trademark then M&M is kind of foolish for using his likeness. he is being pretty greedy though...you have to admit even 10 million is a ridiculous amount of money. give him like...$30. and a haircut.

  • neversleeping

    neversleeping said 11 years ago

    what the heck?!? i swear i didnt post that 3 times. srrry.

  • emilyrae

    emilyrae said 11 years ago

    to answer classabags question: i'd never heard of 'naked cowboy' before the lawsuit (i'm from the midwest), though earlier i believe someone from washington state mentioned that they knew of him, so i'm not sure how well known he is outside of new york.

  • luckycoloryellow

    luckycoloryellow said 11 years ago

    Hey, I know about the Naked Cowboy, and I'm from Columbus Ohio. He's a pretty well known guy. I definitely think he's got a case. I mean, the M&M is playing a guitar and everything. If they had meant to just make him a NYC "cowboy", don't you think that they would have given him a shirt? I've seen the M&M's with more clothing on than that. It's obvious that they're stealing his notoriety to make a buck. Go Naked Cowboy!

  • 47bonanza

    47bonanza said 11 years ago

    Absoultely no doubt in my mind that Chute Gerdeman copied his likeness for the ad. He will win the lawsuit, my guess is a settlement out of court for something less that what he is asking for.

  • verybigjen

    verybigjen said 11 years ago

    Mr Naked Cowboy is from Cincinnati, not far from me! It's obious they were copying him - but he's a big cry baby about this stuff.I hrink at this point He's a "institution" and parody law can be applied. Not sure why this is on etsy though.

  • suzanneartist

    suzanneartist said 11 years ago

    I'm amazed that Mars corporation apparently doesn't have any informed lawyers on staff, nor the ad agency that created the ad. Stealing The Naked Cowboys concept with out permission would set a precedent for other companies to use his idea, of which the cowboy would receive nothing. Free advertising isn't the point-freely stealing a copyright so a corporation can benefit off his idea is what the issue is. 100 mil is excessive, but let's look at Mars annual report first-profit earnings area- I do feel this actor should be compensated, and that will come in the settlement when negotiations start up. It's upsetting to hear of any corporation being arrogant enough to blatantly take advantage of a singular small business. Even if the publicity brings him more attention, he had to invest a lot of time, and money to fight this situation.

  • leathermadenice

    leathermadenice said 11 years ago

    I am surprised to read that NC is in fact registered. I am Canadian - eh! :P and may have heard of him in passing but it would make one think that the exec's at M&M's were neglectful in doing their homework or at least researching NC prior to publishing the Ad. Perhaps they knowingly did so thinking that the little guy wouldn't have the resources to fight back. I wish NC all the luck in the world!! :)

  • chiko112

    chiko112 said 11 years ago

    m@m's is a big company and its strange that they did'nt consider it as a big deal. cowboy has hard earned his style and repute

  • myaphrodite

    myaphrodite said 11 years ago

    there's a fine line between satire and infringement in legal terms, I imagine, but they DID kind of make it look like he was endorsing a product he wasn't. 100 million seems like a stupid sum of cash, but my guess is that it was just to get the withdrawal of the billboard and to a smaller sum.

  • eyekandidesigns

    eyekandidesigns said 11 years ago

    The naked cowyboy is a classic to New York and the tourists. Copying someone exactly gets my goat and I feel they should of created their own "person". Find new ways to create something funny and classic it's what keeps the world more interesting. Don't do as others do be your own individual creator there are many things they could of and should of done...We should all learn from others mistakes, hopefully it won't cost any of us millions-ouch!

  • brianslittlegirl

    brianslittlegirl said 11 years ago

    I definitely think he's got a case there for sure. And yeah, 100 mill is pretty steep, but this is M&M's... huge company, if it's not a large sum then it doesn't effect them much. I can't believe they were so stupid as to do that. He's absolutely an icon of sorts!

  • ChildofHope

    ChildofHope said 11 years ago

    What ever happened to parody? If you ask me, I think he's got his knickers in a knot. Should they have used it to sell their products without his permission? No...is it worth $100 million? No way! He says he would never endorse such a product when childhood obesity is such a problem. I'm sure....like he's never had an m&m. Everything in moderation. I say just give him a fraction of that and tell him to get over it. I think he's just trying to milk it.

  • californiaartist

    californiaartist said 11 years ago

    OK, I love cowboys, being from the WEST, but where do we bring in the roper and lasso this issue? I think that a Cowboy has the right to express himself and I love m&m's, but I can see the similarities, so in Cowboy vs. m&m's I would say the Judge should rule for the Cowboy. Now if this was Cowboy vs. Chocolate then it would be one difficult Rodeo. Oh, give him the $100 million so he can go buy an Armani Suit and a leather case for his guitar so he can stop singing on the streets of New York.

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