A federal judge has ruled that the New York street performer known as The Naked Cowboy can move ahead with his $6 million lawsuit against M&M maker Mars Inc. over a billboard that depicted M&M characters dressed in all-white get-ups just like his—cowboy hat, boots and skivvies.

However, in the June 23 ruling, the judge also dismissed a key part of Robert Burck’s suit against Mars, clarifying that New York’s statutory right of privacy only covers the use of a person’s real name or likeness—and does not extend to fictitious characters. See Burck d/b/a The Naked Cowboy, v. Mars, Inc., 08 Civ. 1330 (S.D.N.Y., June 23, 2008).

Burck has performed as The Naked Cowboy for a decade, strumming an acoustic guitar while wearing nothing but underpants, a hat and boots. He has become a Times Square tourist attraction, has appeared in character in television shows, movies and video games, and has licensed his name and likeness to companies for endorsements and ads.

Mars retained an advertising agency to create a video for two electronic billboards in Times Square and a mural for its M&M world store in Times Square. The video featured an animated blue M&M character dressed like The Naked Cowboy, as well as M&M characters dressed as other New York icons such as the Statute of Liberty and King Kong. The mural inside the store featured M&Ms in familiar New York contexts, and included a yellow M&M dressed in Naked Cowboy costume.

Mars did not request or receive permission from Burck to use his costume on their M&M characters. Burck sued Mars for trademark infringement under the Lanham Act, as well as for alleged violations of New York’s Civil Rights Law, which protects the right of privacy. Mars defended itself on a number of grounds, including fair use, the First Amendment and parody.

Right of Privacy

New York’s Civil Rights Law prohibits the use “for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person.”

The law has been interpreted to protect celebrities from the use of “look-alikes” in ads, noted U.S. District Judge Denny Chin in Burck. He cited a case in which Christian Dior was deemed to have violated the right of privacy for running an ad that included a model who looked like Jacqueline Kennedy Onassis. See Onassis v. Christian Dior-New York, Inc., 122 Misc. 2d 603 (N.Y. Sup. Ct. 1984).

But the statute only prohibits the use of representations that are deliberately designed to “convey the idea” that an individual actually appeared in an ad, the court noted.

The law does not extend to actors who may take on some of the characteristics of a celebrity but clearly are distinguishable from them, the judge said. He cited a case in which the court rejected a claim by conductor Guy Lombardo that was based on a commercial showing an actor conducting a band playing “Auld Lang Syne” at a New Year’s Eve party, much as Lombardo had done for decades. See Lombardo v. Doyle Dane & Bernback, Inc., 58 A.D.2d 620 (2d Dep’t 1977).

In Lombardo, the court held that New York’s right of privacy “is to be strictly construed and is not to be applied so as to prohibit the portrayal of an individual’s personality or style of performance.”

Applying the Lombardo rationale, Judge Chin determined that Mars did not violate Burck’s right of privacy because the advertiser did not use Burck’s actual likeness. “[D]efendants did evoke certain aspects of the character created by Burck, and they copied The Naked Cowboy’s costume, but these actions were not prohibited,” the judge stated. “Merely evoking certain aspects of another’s character or role does not violate [the statute].”

He also concluded that “[t]he plain language … makes it clear that the statutory right to privacy does not extend to fictitious characters adopted or created by celebrities.” The judge addressed the seminal decision in this area, and rendered a lawsuit brought by “Wheel of Fortune” hostess Vanna White against an advertiser for the portrayal of a robot with a blonde wig that turned letters on a board. See White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992).

The court had allowed White to bring her right to publicity claim only under California common law—and not under California’s privacy statute, Judge Chin noted. New York has no analogous common law right.

False Endorsement Claim

Although the court dismissed Burck’s right of privacy claim, the court did rule that he could proceed to trial on a claim of false endorsement. The Lanham Act’s prohibition against false or misleading representations are “an appropriate vehicle for the assertion of claims of falsely implying the endorsement of a product or service,” the court noted.

Mars defended the false endorsement claim on the basis that its ads were protected parodies.

“Defendants argue that the M&M Cowboy characters conjure up just enough of Burck’s trademark … for consumers to recognize the target of the parody, while at the same time making ‘obvious changes to the marks that constitute the joke.’” Mars also argued that the M&M characters should be considered in context; that both the billboard video and mural in question displayed the M&M cowboy characters “as part of a series of parodies of the ‘New York City experience.’”

The court did not rule against Mars on the parody issue—only that the legal question as to whether it was protected under the parody doctrine was a matter that should be determined at trial.

“Consumers may mistakenly believe that The Naked Cowboy himself endorsed the copying of his ‘trademarked likeness’ because the M&M Cowboy characters appear in a commercial setting,” the court noted. “The complaint plausibly argues that consumers would believe that the M&M Cowboy characters were promoting a product rather than merely parodying The Naked Cowboy.”

Why This Matters: In addition to being a high-profile suit, the decision places important limitations on New York’s right of privacy law. The decision clarifies that while people have a right to protect their names and likenesses, the law does not extend to protecting aspects of their style and personalities. The effect of this holding may be to provide advertisers with breathing space to spoof popular culture.