Question: BURCK v. M MARS, INC., 571 F. SUPP. 2D 446 (S.D. N.Y. 2008)

FACTS Plaintiff Robert Burck had performed as a "street entertainer" in New York City's Times Square as The Naked Cowboy for over a decade. Burck performed wearing only a white cowboy hat, cowboy boots, and underwear, and carried a guitar strategically placed to give the illusion of nudity. He became a popular tourist attraction. In April, 2007, defendants Mars, Incorporated ("Mars"), the maker of M&M candies, and Chute Gerdeman, Inc. ("Chute"), an advertising and design agency, began running an animated cartoon advertisement on two huge video billboards in Times Square. The ad starred a blue M&M dressed "exactly like The Naked Cowboy," wearing only a white cowboy hat, cowboy boots, and underwear, and carrying a guitar. Burck sued, alleging that Defendants had violated his "right to publicity" under New York law. New York does not have a common law right to publicity.

However, Sections 50 and 51 of the state Civil Rights Act protect against 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." DECISION The court noted that Defendants had not used Burck's "portrait" or "picture." They "did not use an actual photograph or picture of Burck himself, nor did they use a recognizable likeness or representation of him." Moreover: 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 .... The Naked Cowboy is not a living person, but a character Burck takes on when performing. The privacy statutes were not intended to protect a trademarked, costumed character publicly performed by a person. The court concluded: "[T]here was no attempt to create a portrait or picture of Burck himself. Rather, the purportedly infringing images were M&M characters wearing Burck's signature outfit. The images were not portraits or pictures of Burck as The Naked Cowboy, but of M&Ms dressed as The Naked Cowboy." Thus, the court dismissed Burck's right of publicity claim.