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.
Here’s
a video in support of the Naked Cowboy’s bad claim. Here’s a video of the Naked
Cowboy singing, without apparent irony, If I Said You Had a Frivolous Lawsuit,
Would You Hold It Against Me?
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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