Naked Cowboy vs. M & M

June 23, 2008 1:00:48 PM PDT
A judge on Monday stripped away claims in a lawsuit filed against Mars Inc. by a Times Square entertainer known as the Naked Cowboy but said he could still argue in court that the candymaker borrowed his racy look for its blue M&M.U.S. District Judge Denny Chin said a jury would have to decide whether Mars' advertising campaign left the impression that Robert Burck, who became a tourist attraction for strumming a guitar while wearing just boots, underpants and a hat, had endorsed the product.

Chin tossed out claims that Burck is owed compensatory and punitive damages because the M&M video advertisement that appeared on two electronic billboards in Times Square and a mural violated a New York State law protecting privacy rights of individuals.

The judge said the law protects the name, portrait or picture of an individual but not a character created or a role performed by the person.

Burck sued to protect trademarks he had obtained as he appeared in television shows, movies and video games, including a Chevrolet commercial that debuted during Super Bowl XLI.

The lawsuit was filed earlier this year against Mars and Chute Gerdeman Inc., an advertising and design agency.

The Blue M&M Cowboy was part of an advertising campaign with other M&Ms in famous New York scenes. One climbs the Empire State Building like King Kong. Another looks like the Statue of Liberty, arm outstretched. Yet another rides a carriage through Central Park. The blue M&M strums a guitar wearing just underpants, boots and a hat.

Lawyers for Mars and Chute Gerdeman argued that the lawsuit should be dismissed because the M&M cowboy was a parody and protected by the First Amendment.

Scott M. Rothman, a lawyer for Burck, said: "The Naked Cowboy is obviously pleased with the judge's ruling that he has pled a viable claim for trademark infringement under federal law."

A lawyer for Mars and Chute Gerdeman did not immediately return a phone message for comment.