Burck v. Mars, Inc.
88 U.S.P.Q. 2d (BNA) 1942, 571 F. Supp. 2d 446, 2008 U.S. Dist. LEXIS 47861 (2008)
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Rule of Law:
New York's statutory right of privacy protects the 'name, portrait, or picture' of a living person and does not extend to a fictional character, persona, or costume created and used by that person.
Facts:
- Robert Burck is a street entertainer who performs in New York City's Times Square as the character 'The Naked Cowboy.'
- Burck's signature costume consists only of a white cowboy hat, white cowboy boots, white underpants, and an acoustic guitar.
- Burck has registered trademarks for The Naked Cowboy name and likeness.
- Mars, Incorporated, a candy company, hired Chute Gerdeman, Inc. to create an animated cartoon advertisement.
- The advertisement, displayed on large video billboards in Times Square, featured a blue M&M character dressed identically to The Naked Cowboy: wearing a white cowboy hat, boots, underpants, and carrying a guitar.
- Mars and Chute did not seek or receive Burck's permission to use the likeness of his character for their commercial advertisement.
Procedural Posture:
- Robert Burck (Plaintiff) filed a lawsuit against Mars, Incorporated and Chute Gerdeman, Inc. (Defendants) in the U.S. District Court for the Southern District of New York.
- Burck's complaint alleged trademark infringement under the Lanham Act and a violation of his right of privacy under N.Y. Civil Rights Law § 51.
- Defendant Chute filed a motion to dismiss the complaint for failure to state a claim.
- Defendant Mars filed a motion for judgment on the pleadings.
- Plaintiff Burck filed a motion to strike several of the defendants' affirmative defenses.
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Issue:
Does dressing an animated character in the signature costume of a performer's public persona, without using the performer's actual name or physical likeness, constitute a violation of the performer's statutory right of privacy under New York Civil Rights Law §§ 50 and 51?
Opinions:
Majority - Chin, District Judge
No. New York's statutory right of privacy, as defined in Civil Rights Law §§ 50 and 51, does not prohibit the use of a performer's signature costume or character when applied to a non-human, animated figure. The statute explicitly protects the 'name, portrait, or picture' of a 'living person.' The M&M character is not a portrait or picture of Robert Burck, the living person, as no reasonable viewer would believe the animated candy was intended to be him. The court reasoned that the statute was designed to protect a person's identity, not the fictitious character or persona they create. Therefore, while the defendants evoked Burck's well-known character, they did not use his 'portrait or picture' as required by the statute. However, the court did allow Burck's separate false endorsement claim under the federal Lanham Act to proceed, as it was plausible that consumers might be confused into believing he had endorsed the product.
Analysis:
This decision significantly clarifies the narrow scope of New York's statutory right of privacy, establishing a clear distinction between a person's protected physical likeness and their unprotected created persona or costume under that specific law. It effectively channels claims of persona appropriation, like this one, away from the state privacy statute and toward federal trademark law, where the central question is consumer confusion rather than the use of a 'portrait or picture.' This provides a more predictable legal framework for advertisers and celebrities by defining the distinct legal theories applicable to the use of a person's actual identity versus their public character.
