Naked Cowboy v. CBS
844 F. Supp. 2d 510, 40 Media L. Rep. (BNA) 1434, 101 U.S.P.Q. 2d (BNA) 1841 (2012)
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Rule of Law:
The fair use doctrine permits the descriptive use of a registered trademark in commerce without constituting infringement, particularly when the use is not intended to identify the source of the product and the product's actual source is clearly identified. A defendant's portrayal of a character similar to a public persona does not constitute trademark infringement or a civil rights violation if the specific registered mark is not used and there is no likelihood of consumer confusion regarding sponsorship or endorsement.
Facts:
- Robert Burck, known as the 'Naked Cowboy,' has been a popular street performer in New York City's Times Square since 1997, wearing only briefs, cowboy boots, a cowboy hat, and playing a guitar.
- Burck's costume prominently displays the words 'Naked Cowboy' on his briefs, hat, and guitar, and 'Tips' or '$' on his boots.
- Burck registered the word mark 'Naked Cowboy' on April 9, 2002, and re-registered it on May 25, 2010.
- On November 1, 2010, CBS broadcast an episode of its television series 'The Bold and the Beautiful,' produced by Bell-Phillip Television, which featured a character named Oliver appearing in briefs, cowboy boots, and a cowboy hat while singing and playing a guitar.
- Oliver's costume in the episode did not include the words 'Naked Cowboy,' 'Tips,' or '$' anywhere on his attire or guitar.
- CBS later posted a clip of this episode on its YouTube channel, titling it 'The Bold and the Beautiful—Naked Cowboy,' and Bell-Phillip posted a recap of the week's episodes on its YouTube channel, including the scene with Oliver, and listed tags including 'naked' and 'cowboy.'
- Defendants purchased ad-word advertising from YouTube for the search term 'naked cowboy,' which caused their videos to appear as 'Featured Video' search results when users searched for 'naked cowboy.'
Procedural Posture:
- Plaintiff Robert Burck, known as the 'Naked Cowboy,' initiated an action against CBS and Bell-Phillip Television in the United States District Court for the Southern District of New York, alleging violations of the Lanham Act, New York General Business Law, New York Civil Rights Law, and common law fraud.
- Defendants CBS and Bell-Phillip Television filed a motion to dismiss the Complaint under Federal Rule 12(b)(6) for failure to state a claim upon which relief may be granted.
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Issue:
Does a television network's depiction of a character in a costume similar to a famous street performer, and its use of the performer's registered word mark in the title and tags of online video clips, constitute trademark infringement, unfair competition, dilution, or a violation of New York civil rights laws when the network's own branding is prominently displayed and the use is descriptive?
Opinions:
Majority - Barbara S. Jones
No, the defendants' actions do not constitute trademark infringement, unfair competition, dilution, or a violation of New York civil rights laws. For trademark infringement, the court found that while 'Naked Cowboy' is a registered mark, the defendants did not make infringing 'use in commerce.' Oliver's costume did not incorporate the registered word mark or distinctive elements like 'Tips' or '$'. CBS's use of 'Naked Cowboy' in its YouTube clip title was a descriptive 'fair use' under 15 U.S.C. § 1115(b)(4), as it aimed to describe the video's content rather than identify the source, especially since CBS's own logos were prominently displayed. The purchase of ad-words was not considered a 'use in commerce' to indicate source or sponsorship. For unfair competition claims under Lanham Act Section 43(a), the court concluded that Oliver's costume was not sufficiently similar to the Naked Cowboy costume to constitute use of the mark, and an application of the Polaroid factors for likelihood of confusion revealed no such likelihood, given minimal similarities, distinct markets, no bad faith, and the clear identification of CBS as the source. Federal and state dilution claims failed for the same reason—Oliver's costume did not constitute 'use of the mark.' Finally, the New York Civil Rights Law §§ 50 and 51 claims were dismissed because the right to privacy does not extend to fictitious or trademarked costumed characters publicly performed by a person, as established by precedent. The common law fraud claim was dismissed as frivolous, being subsumed by the other claims and lacking allegations of justifiable reliance by the plaintiff.
Analysis:
This case significantly reinforces the 'fair use' defense in trademark law, particularly for descriptive uses in media contexts. It clarifies that merely depicting a character that resembles a famous persona, without using the actual registered word mark or distinct identifying features, does not automatically constitute infringement. The decision emphasizes the importance of clear source identification (e.g., prominent display of the defendant's own branding) in mitigating claims of consumer confusion. Moreover, it draws a crucial distinction between a person's identity and a public character they portray for the purposes of New York's civil rights laws, limiting the scope of privacy and publicity rights for costumed personas.
