Tuesday, February 28, 2012

The Bold and the Naked

Naked Cowboy v. CBS, --- F.Supp.2d ----, 2012 WL 592539 (S.D.N.Y.)
The Naked Cowboy sued CBS for violating the Lanham Act and coordinate state law.  CBS successfully moved to dismiss.
The Naked Cowboy wears only briefs, cowboy boots, a cowboy hat, and a guitar as he performs in NYC’s Times Square.  “Naked Cowboy” is written on his outfit, with “Tips” and “$” on the boots.  He claims wide notoriety including nationwide publicity.  He registered “Naked Cowboy” in 2002, has numerous corporate sponsorships and a couple of endorsement deals, and sells licensed merchandise.
CBS broadcasts “The Bold and the Beautiful,” and it and the production company put their names/logos on the opening credits and at the end of each episode.  On November 1, 2010, a character named Oliver appeared for several seconds only in his briefs, cowboy boots, and a cowboy hat, while singing and playing the guitar. The words “Naked Cowboy” didn’t appear visually or aurally, nor were “Tips” or “$” on his boots.  There’s also a recap show covering the preceding week, and the November 5, 2010 recap included the scene; the recap continuously features the production company’s logo.
Over 3 million people watched the original episode, which (of course) featured paid ads.  CBS also posted a clip of the episode on its YouTube channel, as did the production company.  CBS called its YouTube clip “The Bold and the Beautiful—Naked Cowboy.”  The caption “Oliver has a surprise for Amber” appeared beneath the clip.  CBS’s trademarks were displayed prominently on its YouTube page and at the end of the clip. “Naked” and “cowboy” were two of the tags on the production company’s YouTube page.  Defendants also allegedly purchased “naked cowboy” as an AdWord, making the clip a “Featured Video” on YouTube and giving the clip multiple results for a YouTube search on “naked cowboy.”
The court found that defendants hadn’t used “naked cowboy” in commerce.  The episode itself didn’t use the word mark, and the court determined that “inclusion of ‘naked’ and ‘cowboy’ as separate tags associated with the YouTube video clips is not ‘use’ of Plaintiff's word mark ‘Naked Cowboy.’”  (I wonder how well this flies in the Second Circuit.  It could be non-TM use—among other things, it could be descriptive use, see below—but given Rescuecom, the conclusion that it isn’t “use in commerce” would appear to be a hard sell.)  The court further found that the AdWords purchase wasn’t use because defendants didn’t place the term “on any goods or containers or displays or associated documents, nor do they use them in any way to indicate source or sponsorship.”   
The only use of the registered word mark in commerce—“and therefore the only potential source of trademark infringement—is CBS's use of the term ‘Naked Cowboy’ in the title of its YouTube video clip.”  That was descriptive fair use.  It was not TM use: “It is clear that CBS used the phrase in an effort to describe the contents of the video clip, not as a mark to identify the source of the video clips.”  That was clear from the prominent display of the series title and CBS’s own logo, as well as the caption beneath the clip which referenced only named characters.  The Naked Cowboy also failed to allege sufficiently that CBS used the mark in bad faith, which requires intent to trade on the plaintiff’s good will.  “Besides conclusory allegations, the Complaint alleges no set of facts which, if true, would lead to the conclusion that CBS sought to gain advantage by associating its television program with the Naked Cowboy.”  Descriptive fair use as a matter of law.
What about the unfair competition/false endorsement Lanham Act claims?  The court applied the same fair use defense to the word mark-based claims.  It then turned to the allegations that the Naked Cowboy costume was a protectable mark.  Without addressing the special requirements for trade dress (pun intended), the court stated that the costume “contains several distinctive characteristics,” but it identifed those as the presence of the word mark on the hat, briefs, and guitar, as well as the “Tips” or “$” on the boots.  On the pleadings (at least I assume so, though it’s couched as a factual finding), the costume is “extremely recognizable.”  But Oliver’s costume contained none of those distinctive characteristics and thus didn’t use the Naked Cowboy’s mark.  (I think it would have been cleaner to address this as a Rogers v. Grimaldi issue.)
The court nonetheless assessed likely confusion, looking at the multifactor confusion test.  On the pleadings, there was no likelihood of confusion.  Though the costume was distinctive, the similarities were minimal, and the complaint didn’t allege actual confusion.  The parties’ merchandising markets were distinct: a nationwide TV program versus a street performance.  “In addition, while Plaintiff has on numerous occasions appeared as himself on television, none of his television appearances suggests a desire to transition into creating and producing a daytime soap opera, so there is no likelihood that Plaintiff will bridge the gap between the two markets.”
Nor did the Naked Cowboy allege bad faith, or low quality of CBS’s product.  The complaint also didn’t allege anything about the sophistication of the audience, and “even an unsophisticated viewer would not confuse the source of the long-running daytime television series with the source of Plaintiff's street performances or Naked Cowboy souvenirs.”
Dilution: federal dilution requires use in commerce, but Oliver's costume was “simply not sufficiently similar to the Naked Cowboy costume to constitute use of the mark.”  Again, this might have been better addressed with the statutory exceptions.
New York state claims: they’re substantively the same as the Lanham Act claims.  With respect to the statutory right of privacy/publicity, the court noted that another district court had already found in another case brought by the Naked Cowboy that the right to privacy doesn’t cover characters adopted or created by celebrities (which makes me wonder about Stephen Colbert’s rights), so that’s out.

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