United States District Court Usdc Sdny Southern District of New York Document

UNITED STATES DISTRICT COURT USDC SDNY SOUTHERN DISTRICT OF NEW YORK DOCUMENT - - - - - - - - - - - - - - - - - -x ELECTRONICALLY FILED DOC #: ___________________ ROBERT BURCK d/b/a THE NAKED : DATE FILED: __6/23/08_____ COWBOY, : Plaintiff, : OPINION - against - : 08 Civ. 1330 (DC) MARS, INCORPORATED and CHUTE GERDEMAN, INC., : Defendants. : - - - - - - - - - - - - - - - - - -x CHIN, District Judge This is the case of The Naked Cowboy versus The Blue M&M. Plaintiff Robert Burck is a "street entertainer" who performs 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. In this case, Burck sues defendants for compensatory and punitive damages. He alleges that defendants have 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. Three motions are before the Court: Chute moves pursuant to Fed. R. Civ. P. 12(b)(6) to dismiss the complaint; Mars moves pursuant to Fed. R. Civ. P. 12(c) for judgment on the pleadings; and Burck moves pursuant to Fed. R. Civ. P. 12(f) to strike certain of defendants' affirmative defenses. For the reasons that follow, Burck's motion is denied and defendants' motions are denied in part and granted in part. Burck's right to privacy claim (denominated as a right of publicity claim) is dismissed, for the New York statute protects the name, portrait, or picture of a "living person," not a character created or a role performed by a living person. Burck -2- may proceed, however, with his false endorsement claim, for he plausibly alleges that consumers seeing defendants' advertisements would conclude -- incorrectly -- that he had endorsed M&M candy. BACKGROUND A. The Facts As alleged in the complaint and set forth in the exhibits incorporated therein by reference, the facts are as follows: For the past ten years, Burck "has performed as a street entertainer in New York City's Times Square under the persona known as The Naked Cowboy," wearing only "a white cowboy hat, white cowboy boots, white underpants, and an acoustic guitar." (Compl. ¶¶ 5, 6). His street performances "have become a fixture of New York City culture, as well as one of the top tourist attractions" in Times Square. (Id. ¶ 7). The Naked Cowboy has become "a prominent and well-known persona," and Burck has registered trademarks to The Naked Cowboy name and likeness. (Id. ¶¶ 20, 21). In addition to performing in Times Square, Burck has appeared as The Naked Cowboy in various television shows, movies, and video games. (Id. ¶¶ 10-19). He has also licensed his name and likeness to companies for endorsements and advertisements. (Id. ¶ 22). For instance, he appeared in a Chevrolet commercial that debuted during Super Bowl XLI. (Id. ¶ 23). Mars sells candies and chocolate products, including the world-famous M&M's. (Id. ¶ 33). Mars retained Chute, an -3- advertising and design agency, to create a video for two electronic billboards in Times Square and a mural for its M&M World store located in Times Square. (Id. ¶¶ 32, 33). The video (an animated cartoon) featured "a blue 'M&M' dressed up exactly like The Naked Cowboy -- white underwear, white cowboy hat, white cowboy boots, and white guitar." (Id. ¶ 26; see DX C).1 In addition to the M&M Cowboy character, the video showed other M&Ms as famous New York figures, such as the Statue of Liberty and King Kong, as well as everyday New Yorkers and tourists engaging in typical New York activities such as hailing a cab and riding a carriage through Central Park. Beginning in April 2007 (Compl. ¶ 29), the video "played on a continuous loop every few minutes over a nine-month period" (Tr. at 22). The mural inside the M&M World store was a snapshot of the heart of Times Square, transformed into an animated world populated by M&M characters. (Compl. ¶ 30; see DX B1). Neon lights, oversized billboards advertising Broadway shows, and familiar landmarks, such as the Cup Noodles sign, filled the scene. Many of the signs and billboards in the mural were altered to incorporate the M&M logo or candy themes, such as replacing "STOMP" (the name of a show) with the word "CHOMP" and substituting a red M&M in place of the red heart in the logo 1 References to "DX" are to defendants' exhibits submitted at the oral argument on June 11, 2008. These exhibits are referred to in the complaint and are deemed incorporated therein by reference. (See Transcript of Proceedings of June 11, 2008 ("Tr.") at 4). -4- "I Ì NY." In the middle of the mural, in the midst of a cluster of billboards, was a small billboard featuring a yellow M&M wearing The Naked Cowboy's signature costume. (DX B1). Defendants did not request, nor did they receive, permission from Burck to use a likeness of The Naked Cowboy for the M&M Cowboy characters. (Compl. ¶ 25). B. Procedural History Burck commenced this action on February 11, 2008, asserting two causes of action: trademark infringement under section 1125(a) of the Lanham Act, 15 U.S.C. § 1125(a), and violation of section 51 of the N.Y. Civil Rights Law, N.Y. Civ. Rights Law § 51 (McKinney Supp. 2008). Mars answered on March 17, 2008, asserting twelve affirmative defenses, including fair use, the First Amendment, and parody (the eighth, ninth, and tenth affirmative defenses, respectively). These motions followed. I heard argument on June 11, 2008 and reserved decision. DISCUSSION I start with defendants' motions, addressing first Burck's right of privacy claim under New York law and second his trademark infringement claim under the Lanham Act. I then turn to Burck's motion to strike certain affirmative defenses. A. Defendants' Motions 1. Motion to Dismiss Standards Motions pursuant to Rule 12(c) for judgment on the pleadings are governed by the same standards applicable to Rule -5- 12(b)(6) motions to dismiss for failure to state a claim upon which relief may be granted. Cleveland v. Caplaw Enterprises, 448 F.3d 518, 521 (2d Cir. 2006). On a Rule 12(b)(6) motion to dismiss a complaint, the court must accept a plaintiff's factual allegations as true and draw all reasonable inferences in his favor. Bernheim v. Litt, 79 F.3d 318, 321 (2d Cir. 1996); see Erickson v. Pardus, 127 S. Ct. 2197, 2199 (2007) (per curiam); Bell Atl. Corp. v. Twombly, 127 S. Ct. 1955, 1965 (2007). In its recent decision in Bell Atlantic Corp., the Supreme Court announced the "retirement" of the oft-quoted "no set of facts" language from Conley v. Gibson, 355 U.S. 41, 45-47 (1957), adopting in its place a "plausibility" standard. Bell Atl. Corp., 127 S. Ct. at 1969. As interpreted by the Second Circuit, Bell Atlantic Corp. did not announce a "universal standard of heightened fact pleading, but . instead requir[es] a flexible 'plausibility standard,' which obligates a pleader to amplify a claim with some factual allegations in those contexts where such amplification is needed to render the claim plausible." Iqbal v. Hasty, 490 F.3d 143, 157-58 (2d Cir. 2007). The question is whether the pleading alleges "'enough facts to state a claim for relief that is plausible on its face.'" Patane v. Clark, 508 F.3d 106, 111-12 (2d Cir. 2007) (quoting Bell Atl. Corp., 127 S. Ct. at 1974). 2. The Right of Privacy Claim a. The Statute The right to privacy has been recognized by statute in New York for more than a century. See Groden v. Random House, -6- Inc., 61 F.3d 1045, 1048 (2d Cir. 1995). The New York legislature enacted sections 50 and 51 of the Civil Rights Law to protect against "nonconsensual commercial appropriations of the name, portrait or picture of a living person." Finger v. Omni Publ'ns. Int'l, Ltd., 77 N.Y.2d 138, 141 (1990); see also Arrington v. New York Times Co., 55 N.Y.2d 433, 439 (1982). There is no common law right to privacy or publicity in New York, and thus sections 50 and 51 provide the only remedy for such claims. Groden, 61 F.3d at 1049. Section 50 of the New York Civil Rights Law makes it a misdemeanor to 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." N.Y. Civ. Rights Law § 50 (McKinney 1992). Section 51 creates a cause of action for the invasion of the "right of privacy" granted by section 50. See Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 571 n.6 (1977). Section 51 provides: Any person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained as above provided [in section 50] may maintain an equitable action . to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use.

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