Burck v. Mars, Inc. - 571 F. Supp. 2d 446 (S.D.N.Y. 2008)

Rule:

Merely evoking certain aspects of another's character or role does not violate N.Y. Civ. Rights Law § 50 (1992) and N.Y. Civ. Rights Law § 51 (Supp. 2008). The plain language of the Civil Rights Law makes it clear that the statutory right to privacy does not extend to fictitious characters adopted or created by celebrities. N.Y. Civ. Rights Law § 51 protects "any person," and N.Y. Civ. Rights Law § 50 limits the statutory protection to "any living person."

Facts:

Plaintiff Robert Burck was a "street entertainer" performing in New York City's Times Square as The Naked Cowboy, wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar strategically placed to give the illusion of nudity. He has registered trademarks to "The Naked Cowboy" name and likeness. Beginning in April 2007, defendants Mars, Incorporated ("Mars") and Chute Gerdeman, Inc. ("Chute") began running an animated cartoon advertisement on two oversized video billboards in Times Square, featuring a blue M&M dressed "exactly like The Naked Cowboy," wearing only a white cowboy hat, cowboy boots, and underpants, and carrying a guitar. Plaintiff instituted the present suit against defendants for compensatory and punitive damages, alleging that defendants violated his "right to publicity" under New York law and infringed his trademarks under federal law by using his likeness, persona, and image for commercial purposes without his written permission and by falsely suggesting that he has endorsed M&M candy. Defendant Chute moved pursuant to Fed. R. Civ. P. 12(b)(6) to dismiss the complaint; defendant Mars moved pursuant to Fed. R. Civ. P. 12(c) for judgment on the pleadings.

Issue:

Should the defendants’ motion for summary judgment or motion to dismiss be granted under the circumstances? 

Answer:

Yes, with respect to plaintiff’s privacy claim. No, with respect to plaintiff’s trademark infringement claim.

Conclusion:

The court granted defendants’ motion in part, holding that plaintiff’s right to privacy claim failed. Merely evoking certain aspects of another's character did not violate N.Y. Civ. Rights Law § 50 (1992) and § 51 (Supp. 2008). The statutory right to privacy did not extend to fictitious characters adopted or created. However, the defendants’ motion was denied as to the trademark infringement claim, because parody was a question of fact for the jury. Although some consumers might view the M&M cowboy character as a parody of a famous New York character, others might perceive the character's use as constituting an endorsement of the product by The Naked Cowboy himself.